The Federal Circuit's most recent pronouncement on functional software patent claims can only reinforce drafters' concerns about claim language being construed as a means-plus-function recitation. In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the court held that, under 35 U.S.C. § 112, ¶ 6, the term "compliance mechanism" was a means-plus function claim term. All claims of U.S. Patent No. 7,316,033 were held invalid because the court found that the patent specification failed to disclose sufficient structure for this claim term.
The ’033 Patent “is generally directed to . . . the prevention of unauthorized recording of electronic media.” Claim 1, considered as representative, recited a “compliance mechanism,” as in, for example, “[a]ctivating a compliance mechanism in response to receiving media content by a client system . . . .” The District Court had determined that the recitation of the “compliance mechanism,” as well as recitation of a “custom media device,” made the claims “invalid for indefiniteness.”
While the parties agreed that the claim language included recitations of functions for the “compliance mechanism,” they disputed whether the claims recited sufficient structure for performing the recited functions. Further, the patent owner did not dispute that “compliance mechanism” had “no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure.”
The claims' mere recitation of a “compliance mechanism” for performing recited functions meant that the claim term should be construed under the means-plus-function rubric. The court noted that “the claims do not use the term 'compliance mechanism' as a substitute for an electrical circuit, or anything else that might connote a definite structure.” There was no support in the intrinsic record to alter this conclusion. Simply describing how the “compliance mechanism” interacted with other system components was not sufficient. The court had “never found that the term 'mechanism'— without more—connotes an identifiable structure; certainly, merely adding the modifier “compliance” to that term would not do so either.”
Turning to whether the term “compliance mechanism” could be construed as a means-plus-function claim term, the court noted the parties' agreement that the “compliance mechanism” performed four functions. The question was “whether the specification discloses adequate structure to achieve all four of the claimed functions.” Further, the “functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor.”
The specification failed to disclose adequate structure for at least three of the four "compliance mechanism" functions. Where an algorithm is alleged to disclose a recited function, expert testimony is required to explain that the support is present. In this case, there was “unrebutted expert testimony that this code only returns various error messages.” Therefore, the algorithm in the specification did not “explain how to perform the diverting function, making the disclosure inadequate.”
The court affirmed the district court holding that the ’033 patent was invalid for indefiniteness.
This case is consistent with – and indeed, copiously cites – the Federal Circuit's recent holding in Williamson v. Citrix Online, LLC. Functional claim language in software patent claims must be supported by a detailed algorithm. And that is one take-away from the present case, and from Williamson. Moreover, as difficult as it is, avoiding functional claim language wherever possible is recommended. For example, instead of reciting “activating a compliance mechanism,” a recitation that omitted the term altogether, and instead simply set forth whatever action or steps compliance mechanism was to take in the context of the claim, might have avoided a finding of indefiniteness.