Patent Claim Interpretation

How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means.  SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury found infringement of claims 11 and 12 of U.S. Patent No. 6,088,802. Those claims recite: 11. A peripheral device, comprising: security means for enabling one or more security operations to be performed on data; target means for enabling a defined interaction with a host computing device; means for enabling communication between the security means and the target means; means for enabling communication with a host computing device; and means for mediating communication of data between the host computing device and the target means so that the communicated data must first pass through the security means. 12. A peripheral device as in claim 11, wherein the target means comprises means for non-volatilely storing data. During claim construction, the court had found that an “interface control device 910” disclosed in the ’802 patent specification was the structure corresponding to the recited “means… Read More »How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the war. VTT is a Finnish state-owned nonprofit research company, including for microelectromechanical systems (MEMS). SiTime is a MEMS manufacturer. VTT is suing for infringement of U.S. Patent No. 8,558,643, covering a MEMS device used in semiconductors to reduce deformation as a result of temperature fluctuations. Independent claim 29 states: 29. A method for designing a micromechanical device comprising a semiconductor element capable of deflecting or resonating and comprising at least two regions having different material properties, drive or sense means functionally coupled to said semiconductor element, the method comprising choosing a basic semiconductor material for the semiconductor element, choosing at least one n-dopant to be added to the semiconductor material, designing the inner structure of the semiconductor material, wherein said designing of the inner structure comprises determining at least two n-dopants, n-dopant concentrations and/or crystal orientations of n-doped material, and… Read More »District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Means-Plus-Function Construction Can Lead to Indefiniteness

In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform and tilts halves of the platform to control movement of the hoverboard. Most notable of the construed claim terms was “limiting shaft.” Plaintiff and patent owner Unicorn conclusorily asserted that the term should be given its plain and ordinary meaning. Defendant and alleged infringer Golab argued that “limiting shaft” was means a plus-function term and could not be defined. The court started by stating that the term “sounds like a structural element” and was presumed not to be means-plus-function because there was no specific recitation of “means.” However, the court determined that the presumption was rebutted because “limiting shaft” clearly described a function, i.e., limiting relative rotation between two objects connected by the shaft, and further because Unicorn failed to provide evidence that described a structure… Read More »Means-Plus-Function Construction Can Lead to Indefiniteness

Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite.  The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.  While both parties agreed that 35 U.S.C. ¶ 6 (means-plus-function) applied, the parties diverged on the question of whether the specification disclosed sufficient structure for the compile function.  During a means-plus-function analysis, the court engages in a two-step inquiry to construe the claim limitations at issue as set forth in Williamson v. Citrix Online, LLC.  First, the court identifies the claimed function, and, second, the court determines “what structure, if any, disclosed in the specification corresponds to the claimed function.”  The Federal Circuit, in Noah Sys., Inc. v. Intuit, Inc., has stated that a structure corresponds to the claimed function if “the specification or the prosecution history clearly links or associates the structure to the function recited in the claim.”  In its proposed claim construction, the Patent Owner, Sentius, alleged that the corresponding… Read More »Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this limitation.” Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D.Tex. May 1, 2020). The asserted claim from the ‘515 Patent, claim 1, is reproduced here: 1. A video encoder for processing a sequence of animated pictures, said encoder comprising:      means for dividing a screen window occupied by said sequence into X rows and Y columns;      means for separately encoding each one of the X·Y parts of each picture of the sequence thus obtained; and      means for associating, to each of said parts, a specific label indicating a position of the part in the window, and for encoding these labels in a random order. During a prior claim construction hearing, the court found that claim 1 invoked 35 USC § 112, ¶ 6 because the claim uses “the words ‘means’ followed by a function. Moreover, the claim language… Read More »Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you like Latin), the conflict necessarily started in an earlier case. Back in 2013, VideoShare sued Google in the District of Delaware for infringing U.S. Patent No. 8,464,302, “Method and System for Sharing Video with Advertisements over a Network.” The accused product was YouTube. The court invalidated the ’302 patent as ineligible subject matter under § 101, and the Federal Circuit confirmed the result. The current case features the same parties and the same accused product, with the case now relocated to the Waco, Texas. VideoShare accused Google—specifically YouTube—of infringing U.S. Patent No. 10,362,341. The ’341 patent is a continuation of the ’302 patent from the Delaware case. During prosecution of the ’341 patent, VideoShare had to use a terminal disclaimer to overcome a double-patenting rejection over… Read More »Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

When Are Preambles Limiting?

In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature provides little use for practitioners, instead proposing grand constitutional theories, doing social science on legal institutions, or setting out policy arguments for changing the law. Professor Lemley’s article falls under the more useful category of doctrinal analysis: surveying a field of law and offering some original points that practitioners would do well to think about. The field of law in this article is claim construction when applied to the preamble of the claim. The preamble is the introduction to a patent claim, typically followed by a transition term like “comprising” or “consisting of” and then the body of the claim. The body recites the substantive limitations making up the invention. By default, the preamble is not limiting, meaning that it is given no weight in anticipation, obviousness, or infringement. A prior art reference can anticipate a claim even if what… Read More »When Are Preambles Limiting?

Claim Interpretation and Definiteness of Terms of Degree

In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned by Defendant Deejayzoo and is directed toward an improved shower cap that reduces volume experienced by a user of the cap. Claim 1 of the ‘930 patent recites, in relevant part: 1. A covering apparatus comprising: a unitary material; . . . wherein the unitary material comprises an outer layer and an inner layer; wherein the outer layer comprises a fabric; wherein the outer layer is water repellent; wherein the inner layer is polyurethane[;] . . . and wherein the covering apparatus is a shower cap. During claim construction, Kitsch argued to the Court that claim 1 was indefinite under 35 U.S.C. § 112 and could not be construed because the phrase “water repellent” was relative and failed to provide the necessary definitive metes and bounds. Specifically, Kitsch argued that all fabrics are water repellent to some degree, providing supportive… Read More »Claim Interpretation and Definiteness of Terms of Degree

CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

The Federal Circuit, in vacating the Patent Trial and Appeal Board’s (PTAB) decision in an inter partes review (IPR) that claims in a patent were not obvious, held that, for an obviousness inquiry, reference numerals in the claims “do[] not limit the disclosure of the claims.” Grit Energy Solutions, LLC v. Oren Technologies, LLC, 2019-1063 (Fed. Cir. Apr. 30, 2020) (patent-in-suit is U.S. Patent No. 8,585,341). The ‘341 patent “requires (a) the container to have a gate with a pin fixedly affixed thereto, and (b) the support structure to have an actuator with a receptacle.” During the IPR, Grit Energy argued that the ‘341 patent was obvious over U.S. Patent No. 7,252,309 and French Patent Application No. 2,640,598. The court noted that it is undisputed that the ‘309 Patent “discloses the opposite of the ‘341 configuration,” and the ‘598 application’s “non-limiting example, standing alone, discloses the opposite of the ‘341 configuration.” However, the parties disputed whether claim 5 of the ‘598 application discloses the ‘341 configuration. Claim 5 of the ‘598 application is reproduced here. 5. Device according to any one of the preceding claims, characterized in that the mechanical connecting means of the shutter are constituted by at least… Read More »CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.