In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6.
Claim 21, the only claim at issue, recites:
21. A computer product comprising a memory, a CPU, a communications console and a non-transitory computer usable medium, the computer usable medium having an operating system stored therein, the computer product further comprising a customization module, the computer product authorizing access to digital content, wherein the digital content is at least one of an application, a video, or a video game, wherein the digital content is at least one of encrypted or not encrypted, the computer product configured to perform the steps of:
receiving a digital content access request from the communications console, the access request being a read or write request of metadata of the digital content, the metadata of the digital content being one or more of a database or storage in connection to the computer product, the request comprising a verification token corresponding to the digital con-tent, the verification token is handled by a user as a redeemable instrument, wherein the verification token comprises at least one of a purchase permission, a rental permission, or a membership permission wherein the at least one of purchase permission, rental permission, or membership per-mission being represented by one or more of a tag, a letter, a number, a combination of letters and numbers, a successful payment, a rights token, a phrase, a name, a membership credential, an image, a logo, a service name, an authorization, a list, an interface button, a downloadable program, or the redeemable instrument;
authenticating the verification token;
establishing a connection with the communications console, wherein the communications console is a combination of a graphic user interface (GUI) and an Applications Programmable Interface (API) wherein the API is obtained from a verified web service, the web service capable of facilitating a two way data exchange session to complete a verification process wherein the data exchange session comprises at least one identification reference;
requesting the at least one identification reference from the at least one communications console, wherein the identification reference comprises one or more of a verified web service account identifier, letter, number, rights token, e-mail, password, access time, serial number, address, manufacturer identification, checksum, operating system version, browser version, credential, cookie, or key, or ID;
receiving the at least one identification reference from the communications console; and
writing at least one of the verification token or the identification reference into the said metadata.
In layman’s terms, the invention was directed to an improvement related to digital rights managements, e.g., for consumers to maintain access to digital content in the event of a content provider going out of business or other server disruption. Of particular interest in the case was the construction of the claim recitation of “a customization module.”
The Court first looked to whether the “customization module” invoked 35 U.S.C. § 112, ¶6, and should accordingly be construed under a means-plus-function doctrine. As a starting point for the analysis, the Court noted the claim did not specifically recite “means,” and without such recitation there is a rebuttable presumption that § 112, ¶6 does not apply. However, the Court went on to point out that “module” is a well-known nonce word that substitutes for “means,” and the neither the prefix “customization,” nor other recitations of the claim, added any structure to the element. Ultimately, after relying on Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), numerous times throughout their opinion, the Court upheld that the “customization module” invoked § 112, ¶6, and be should construed as a means-plus-function element.
After invoking § 112, ¶6, the Court looked to the specification of the ‘860 patent to determine the scope and meaning of “a customization module.” Unfortunately for Mr. Grecia, the specification merely described the result of the customization module, i.e., without describing how the customization module achieved the described results. The Court particularity pointed out that the specification failed to disclose any algorithm for configuring the claimed module to obtain the described results. Accordingly, because the specification failed to provide sufficient structure to construe “a customization module,” the Court upheld that the claim was indefinite and invalid under 35 U.S.C. § 112, ¶2.
Lessons for Practice
Grecia v. Samsung presents two valuable practice pointers. First, provide extra consideration to claims that may be interpreted as means-plus functions. In words, consider whether the claim language may be interpreted as merely nonce words substituting for “means.” When in doubt, consider adding specific structure to the claim itself. Second, provide a thoroughly detailed specification that describes specific structure in greater detail than the claims themselves. In the case of computer, or “module,” based claims consider adding how the computer/module performs to achieve the described result, including describing one or more algorithms the computer/module can execute.