The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of a user’s finger” are not subject to interpretation as “means-plus-function” limitations. Zeroclick, LLC, v. Apple Inc., (Fed. Cir. June 1, 2018) (precedential).
The patents-in-suit were U.S. patents 7,818,691 and 8,549,443. Zeroclick alleged that Apple infringed claims 2 and 52 of the ‘691 patent and claim 19 of the ‘443 patent. Apple asserted invalidity of those claims for indefiniteness. The claims, Apple asserted, recited means-plus-function terms under 35 U.S.C. §112 ¶6 (post AIA 35 U.S.C. §112(f)) without sufficient supporting structure in the specification.
Claim 2 of the ‘691 patent and claim 19 of the ‘443 patent are representative.
- A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI,
wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a screen (300) and has one or more functions operated by one or more other methods apart from said two step method,
and/or one or more functions operated by said one or more other methods in said existing program can be updated to operate by said two step method,
wherein said GUI executes one or more functions within the GUI by the completion of the following said two step method;
first said pointer (0) is immediately adjacent or passes within a control area (1), which is an area of the screen (300) that may be any size including from a pixel on the screen (3))) to occupying the whole screen (300), and
second by the completion of a subsequent movement of said pointer (0) according to a specified movement generates a ‘click’ event, thereby triggering one or more functions within the GUI.
- A device capable of executing software comprising:
a touch-sensitive screen configured to detect being touched by a user’s finger without requiring an exertion of pressure on the screen;
a processor connected to the touch-sensitive screen and configured to receive from the screen information regarding locations touched by the user’s finger;
executable user interface code stored in a memory connected to the processor;
the user interface code executable by the processor:
the user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation; and
the user interface code is further configured to cause one or more selected operations, which includes one or more functions available to the user interface code of the device, to deactivate while the user’s finger is touching one or more locations on the screen.
First, the CAFC noted, neither of the terms in question use the word “means.” Even after Williamson v. Citrix Online, LLC, there is a presumption that § 112, ¶ 6, does not apply. The essential inquiry is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” (.) Apple provided no evidentiary support to establish that the limitations at issue should be construed under §112 ¶6. The district court legally erred by not giving effect to the unrebutted presumption against the application of §112 ¶6.
The district court thus effectively treated “program” and “user interface code” as nonce words, which can operate as substitutes for “means” and bring the claims within the ambit of §112 ¶6. The court identified three reasons why this is erroneous:
(1) The fact that claims incorporate functional language does not automatically convert the words into means for performing such functions. Many devices take their names from functions they perform (filter, brake, clamp, screwdriver, lock, etc.)
(2) The context strongly supported the plain and ordinary meaning of the terms. For example, claim 2 of the ‘691 patent recites “[a] graphical user interface” which may comprise “an update of an existing program” (emphasis added by the court) Claim 19 of the ‘443 patent recites that the “user interface code” to the code “stored in a memory connected to the processor.” A person skilled in the art would understand these terms to refer to conventional graphical user interface programs or code, existing in prior art at the time of the inventions.
(3) The district court findings do not compel the conclusion that the terms “program” or “user interface code” are used as a substitute for “means.” Further, the patent owner makes no such acknowledgement. Accordingly, the district court erred by effectively treating these terms as nonce words.
Lessons for Practice
- Although weakened by Williamson, the presumption remains that § 112, ¶ 6, does not apply absent the word ”means” in a claim. An examiner still has the burden of providing evidence that a word such as “program” is used to invoke a “means-plus-function” limitation.
- When using a term to invoke a function well known in the art, use terms that invoke some idea of structure such as “program” or “user interface code.” Surround the terms, in the CLAIM, with additional detail. See, e.g., claim 2 above which includes multiple references to “an (said) existing program,” each adding detail related to its function.
- Tie the term to at least some structure, e.g., “stored in a memory connected to a computer.”
- Be prepared to lose this battle. Include a lot of detail, i.e., possible structure, algorithms, flow charts, in your specification. Consider including an explicit means-plus-function claim to differentiate your structural claims. This is treated in detail in our post on Williamson (link above)