Claim 13 of the ‘285 patent continued : The Court found this argument unpersuasive and held that the claim recites insufficient structure. The Court found that the dictionary definition of the term computer application: “fails to provide sufficient additional structure that would not otherwise be implicitly understood if the claim were defined as ‘means for performing’ the aforementioned computer -implemented functions. Indeed, in many of the Federal Circuit cases interpreting ‘computer - implemented means-plus- function claims’ the Court understood the means claimed to be software executed by a computer. The fact that the ‘means for’ language was already understood by the Court to implicitly refer to a sub-class of MPF claims composed of two structural elements – programs executed by a microprocessor – makes clear that explicitly claiming a ‘computer application’ does not add sufficiently definite structure .” 13 13
Claim 13 of the ‘285 patent continued : The Court, having determined claim 13 to be a MPF claim, then turned to determining whether the patent disclosed an algorithm to perform the “access” and “construction” functions as claimed. The Court held that “the specification of the ‘285 patent fails to disclose any type of step-by- step procedure.” The Plaintiff argued that the disclosure for Call Flow Recordings (CFRs) in the Specification provided the required procedure to support the claimed functionality. 14 14
Claim 13 of the ‘285 patent continued : The relied upon section (col. 9, l. 33 – col. 10, l. 3) states, inter alia : “The particular features related to this embodiment of the invention are as follows. The main purpose of these enhancements is to provide a Call Flow Recording (CFR) that details--to the level of detail required for a given application--the progress of a call through the system this CFR is not a database record but is actually a recording of a real-time data stream that allows the progress of the call to be reconstructed including both the route it took through the call handling process--potentially down to the individual key-strokes entered--and when each step occurred. These CFRs are stored within the generic recording system as ‘calls’ of a new, well-known, Format type. This allows the retrieval and replay tools to recognise them and display them appropriately as opposed to trying to replay them as audio calls. The format identifier used is chosen to be in the range reserved for variable bit rate streams. These CFRs are tied to the other components of the call, such as voice recording and screen content record, by use of cross-reference fields within their call detail records. Each CFRs call detail record includes the globally unique reference number of the ‘parent’ call --typically a voice recording--to which it refers. Additionally, ‘Parent’ and ‘Child’ flag fields can be used within the call detail records to alert applications to the fact that the voice call in question has one or more associated ‘calls’ and, conversely, that the CFR has a related parent call and should not be viewed in isolation…” 15 15
Claim 13 of the ‘285 patent continued : The Court reviewed the sections of the ‘285 patent identified by the Plaintiff as providing the needed support (see previous slide) but found the sections only highlighted the “algorithmic structure” and lacked “an explicit step-by- step procedure.” Specifically, the Court stated that the cited portion “assumes the existence of ‘real - time data stream[s]’ and describes the characteristics of such streams that might make the construction of an integrated stream possible but contains no such step-by- step procedure for doing so.” The Court stated that “where a disclosed algorithm supports some, but not all, of the functions associated with a means-plus-function limitation, we treat the specification as if no algorithm has been disclosed.” 16 16
Claim 17 of the ‘854 patent : 17. A system for protecting information provided to an agent via a communication network, said system comprising: a communication monitoring system operative to monitor an interactive communication responsive to an agent request via a communication network and electronically identify information contained in the communication that is to be protected; and a recording device operative to record at least a portion of the communication; wherein the communication monitoring system is further operative to provide instructions to the recording device responsive to electronically identifying the information that is to be protected such that unauthorized access to the information is prevented. 17 17
Claim 17 of the ‘854 patent continued : At issue was whether the term “monitoring system” provided sufficiently definite structure to avoid MPF treatment. The Court found the term “communication monitoring system” did not suffice to connote a definite structure, rather it was claimed as “operative” to perform three functions: To monitor an interactive communication response… To electronically identify information contained in the communication… To provide instructions…to electronically identify the information that is to be protected… 18 18
Claim 17 of the ‘854 patent continued : The Court further found that the term “system” did not impart sufficient structure. The Court stated that a “[s]ystem standing alone is a nonce word that does not describe a structure that could perform the listed functions and the modifier ‘communication monitoring’ provides a functional description of the system but no structure.” 19 19
Claim 17 of the ‘854 patent continued : The Court first looked at FIG. 4 of the ‘854 patent and found that while this system does have memory for storing software for execution, there was no “sufficiently definite structure to save claim 17 from being construed as MPF…” 20 20
Claim 17 of the ‘854 patent continued : The Court then looked at the specification and found that the “specification provides no algorithm for performing the claimed functions.” The Plaintiff relied upon the specification’s mention of “various methodologies” such as an “undisclosed ‘voice recognition algorithm” to provide the required functional disclosure for the claim to “electronically identify information”; however, the Court was not persuaded. For example, col. 4, l. 24 – col. 5, l. 36 of the ‘854 patent reads: “Thus, the various methodologies for protecting information can be generally categorized in one of the following groups; namely, 1) those methodologies that operate to ensure that at least part of the information is not or will not be committed to long term storage, 2) those methodologies that operate to modify at least a portion of the information that is or will be committed to long term storage, and 3) those methodologies that operate to tag certain portion(s) of a communication and to apply security to the tagged portion(s)…” 21 21
Claim 17 of the ‘854 patent continued : The Court found such disclosure was a mere “outline” or “basic explanation” of what the monitoring system “could do,” and nothing more. In fact, the Court appears to have found that such disclosure called into question whether the Section 112, para. 2 written description requirement was satisfied. In considering claim 17 using MPF analysis, the Court found that the disclosure lacked any step-by-step procedure. The Court stated that to rely on such a mere outline would “undermine the purpose of the definiteness requirement.” 22 22
Claim 39 of the ‘324 patent : 39. A recording system for capturing and recording audio data packets transmitted across a data network, comprising: a data switch operable to receive a plurality of call setup requests, requesting to establish a voice data session between a calling party and a called party, the voice data session comprising audio data packets communicated between a calling party and a called party via a data network; a monitoring device operable to capture the audio data packets received by the data switch, wherein the monitor is operable to identify a call to which the audio data packets belong, and to associate the audio data packets to a voice interaction session; and a data store operable to interface with the monitor and to record at least a portion of the received audio data packets to a record associated with the voice interaction session. 23 23
Claim 39 of the ‘324 patent continued : In a similar manner as just discussed, the Court found that the term “monitoring device” invoked MPF treatment and failed to provide sufficient structure. The Court found the claimed “device” to simply be a nonce term that was operative to perform three functions: To capture the audio data packets… To identify a call… To associate the audio data packets to a voice interaction session 24 24
Claim 39 of the ‘324 patent continued : The Court held that while the claims recite computer-implemented functions, the specification of the ‘324 patent did not provide an algorithm for all the functions of the monitoring device. The Court first found the Plaintiff’s reliance on the Summary of the Invention, which stated the claimed functions in a “conclusory manner”, to be insufficient disclosure of an algorithm for the “identify” function. Then, the Court found the Plaintiff’s reliance on identical portions of the specification as support for the “identify” and “associate” functions as evidence that the ‘324 patent lacked a description of how the device would perform the claimed monitoring. Further, the Court stated that “the term ‘monitoring device’ does not appear anywhere in the specification much less with an associated algorithm. The failure to even reference this device in the specification raises enough doubt about whether a person of ordinary skill in the art could ‘understand what structure corresponds to the means limitation.’” 25 25
Claim 18 of the ‘386 patent : 18. A system to manage communications over a communications network that includes an exchange, the system comprising: a monitoring device configured to connect the system to the communications network and to receive data packets from the communications network; an analysis module configured to receive an identifier tagged onto the data packets so as to identify the data packets, such that the identified data packets form at least a portion of the traffic stream and that data packets are selected data packets; a recorder configured to receive the selected data packets and to store the selected data packets, such that the selected data packets are stored data packets; a data store configured to receive and to store the stored data packets from the recorder, such that said at least a portion of the traffic stream is stored; a link between the exchange and the recorder configured to transfer information related to the data packets from the exchange to the recorder. 26 26
Claim 18 of the ‘386 patent continued : The Court found that the term “analysis module” involves the term “module” which was the exact nonce word at issue in Williamson , and that by adding the term “analysis” imparts no structure just as adding “distributed learning control” failed to do so in Williamson . The Court stated that the analysis module “is a black box nonce term that performs a function consistent with the format of MPF claiming” because it is configured to perform a single function (e.g., receive an identifier tagged onto the data packets…) 27 27
Claim 18 of the ‘386 patent continued : The Court held that for similar reasons discussed above in relation to the ‘285 and ‘324 patents, and in Williamson (e.g., no algorithm or step-by-step procedure for the claimed function in the patent’s disclosure), Claim 18 was invalid. The Court found that the Plaintiff’s reliance on a technical dictionary “reveals a lack of structure in the specification.” Specifically, the Plaintiff attempted to impart structure into the claim by arguing that the “’analysis module’ contains inherent structure because the term ‘data analysis’ is defined in a technical dictionary as the ‘systematic investigation of data and their flow in a real or planned system.’” The Court found this unavailing by stating that the “immediate resort to a technical dictionary for an entirely different term reveals the lack of structure in the specification… crediting the definition of ‘data analysis’ as the definition for the added term ‘analysis’ still only describes the claimed function at a high level but fails to offer corresponding structure…” After shooting down the dictionary, the Court then reviewed the specification of the ‘386 patent and was unable to locate an algorithm performing the analysis module’s functions or steps. 28 28
GoDaddy.com, LLC v. RPost Communs. Ltd. (D. Ariz.) The GoDaddy.com case involved six patents, today we discuss U.S. Patent No. 6,182,219 (the ‘219 patent), Claim 82. The ‘219 patent discusses an apparatus and method of proving that the sender of a dispatch sent the dispatch to a particular recipient at a particular time and that the dispatch had particular content. 29 29
Claim 82 of the ‘219 patent : 82. An information dispatch system in an electronic communication network comprising; … (3) a processor for associating the content data with dispatch record data which includes at least said time related indicia and an indicia relating to the destination of the dispatch, to generate authentication data which authenticate the dispatch and the contents of the dispatch; and (4) means for securing at least part of the authentication data against tampering of the sender and the recipient; wherein the processor is combined with the means for securing. 30 30
Claim 82 of the ‘219 patent continued : One issue before the Court was whether the term “processor” (1) failed to recite sufficiently definite structure or (2) recites function without reciting structure for performing that function. In addressing the first part of the Williamson analysis, the Court stated that “the Federal Circuit only requires…that the claim recite some structure to avoid § 112(6)…” The Court stated “[w]hat is important is whether ‘processor’ is a term that is understood to describe structure, as opposed to a term that is simply a nonce word not recognized as the name of structure, and merely substitutes for ‘means for.’” The Court found that the term “processor” designates at least some structure and supported this conclusion by citing multiple technical dictionaries. 31 31
Claim 82 of the ‘219 patent continued : Continuing the Williamson analysis, the Court addressed whether the processor “associates” and “generates” without reciting sufficient structure for performing those functions. The Court first noted that “a skilled artisan would not recognize ‘processor’ as a name of a sufficiently definite structure for ‘associating’ two different types of data in order to ‘generate’ a third class of data. Rather, one of skilled in the art would understand ‘processor’ to mean a general purpose computer…” Thus, the recitation in the claim of a “processor” was deemed not sufficient for performing the specifically recited functions, and further disclosure was required from the specification. 32 32
Claim 82 of the ‘219 patent continued : The Court further stated that “the term ‘processor’ is different from claim terms ‘circuit’ and ‘circuitry,’ which the Federal Circuit has found to denote sufficiently definite structure to avoid application of §112(6). The Federal Circuit has found that the term “circuit” coupled with a description in the claims of the circuit’s operation generally conveys the structural arrangement of the circuit’s components. See Mass. Inst. of Tech. & Elec. for Imaging, Inc. v. Abacus Software (“MIT”) , 462 F .3d 1344, 1354 – 56 (Fed. Cir. 2006); Linear Tech. , 379 F .3d at 1320 – 21; Apex , 325 F .3d at 1374. In contrast, the Court found the claimed "processor" does not convey “anything about the internal components, structure, or specific operation of the processor.” Thus, the Court found that the term processor would not be understood by an ordinarily skilled artisan as having sufficient structure for performing the recited associating and generating functions, and therefore §112(6) was invoked. Nonetheless, in analyzing the specification, the Court found sufficient structure (a particular micro-controller) and a specific algorithm (a recited formula), thus the claim limitation was held to satisfy §112(6). 33 33
Claim 82 of the ‘219 patent continued : Turning to the “means for securing…” limitation, such limitation was agreed upon by the parties to be subject to MPF construction. The Court’s analysis of the “securing” functionality hinged on its finding that “securing” was a “specific function performed by a special purpose computer.” Thus, the Court analyzed the disclosed algorithms in the specification of the ‘219 patent. The Court found that the ‘219 patent disclosed four separate methods for “securing,” and analyzed each individually. 34 34
Claim 82 of the ‘219 patent continued : In discussing the first of four methods, the Court stated: “The first method discloses storage unit 54 as a ‘Write -Once-Read-Many (WORM) device such as an optical disk or a Programmable Read-Only Memory (PROM) device.’ Id . col. 7 ll. 46 – 48. As to the securing process, the specification explains that controller 56 'stores’ and ‘retrieves’ the information from storage unit 54, and ‘unsecures’ the information if it is ‘secured.’ Id . col. 7 ll. 59 – col. 8 ll. 5. Under Federal Circuit law, ‘[i]t is well settled that simply disclosing software . . . without providing some detail about the means to accomplish the function, is not enough.’ Function Media , 708 F .3d at 1318 (citation and quotations omitted). This first method of ‘securing,’ however, does not simply disclose the generic term ‘software,’ but provides particular types of software that inherently assure that the data written on the device cannot be tampered with once it is written on the device.” This method was found to have sufficient disclosure. 35 35
Claim 82 of the ‘219 patent continued : Regarding the second method, the Court analyzed col. 7, ll. 41- 58 of the ‘219 patent, which recited in part: “The storage unit 54 is used for storing the information… may be enclosed within a securable device…” The second method was found to have insufficient disclosure because, as the Court stated: “The specification simply discloses that storage device 54 is ‘enclosed within a securable device.’ … ‘219 Patent col. [7, ll. 49 -50.] Such nonce terminology merely discloses functional language without any form of structure.” 36 36
Claim 82 of the ‘219 patent continued : The third method was found to have insufficient disclosure because, as the Court stated: “The third disclosed method to ‘secure’ the authentication data via storage unit 54 is ‘it may be provided with read - only access privilege.’ ‘219 Patent col. 7 ll. 50 –51. The specification devotes only one other sentence to this method: ‘[o]ne embodiment of secure storage is that which has read- only privileges.’ Id. col. 9 ll. 56 – 67. Unlike the first disclosed method of storing the data on a WORM or PROM device, the sole step of ‘[p]rovid[ing the data] with read - only privilege’ does not set forth a step-by- step procedure for how the claim’s function of ‘securing’ is to be performed.” The Court stated that “the specification does not explain how the data is ‘provided’ with read -only access or who has access to the data. For these reasons, the Court finds that this method fails to disclose a sufficient algorithm.” 37 37
Claim 82 of the ‘219 patent continued : The fourth method was found to have sufficient disclosure because, as the Court stated: “The fourth method of ‘securing’ authentication data is ‘using a compression, private or public key encryption or scrambling technique, a password, or a combination thereof, such as those employed by the widely used RSA encryption method, and by the PKZIIP(tm) program from PKWARE Inc., Glendale, Wis. U.S.A., and where the ‘securing’ procedure, key or password are unknown to any interested party.’ The Court finds that this method sufficiently describes an algorithm to accomplish the claimed function of securing data against unauthorized access.” 38 38
SyncPoint Imaging, LLC v. Nintendo of Am. Inc. (E.D. Tex.) During claim construction, the Court found the claimed subject matter involving a “processor” to not invoke §112(6). The analysis in this case yields a different result from that in GoDaddy.com . The patent-in- suit: U.S. Patent No. 6,275,214 (the ‘214 patent) describes a system for remotely controlling a computer by optically tracking and synchronizing a wireless optical pointer with a projected image of the computer screen. 39 39
Claim 24 of the ‘214 patent : 24. A computer presentation system for generating commands to remotely control a computer based on a plurality of user selectable properties of an optical cursor generated by a hand-held pointer and projected on a screen displaying output from the computer, the system comprising: a camera for capturing an image of the output from the computer; and a processor in communication with the camera for processing the image to detect position of the optical cursor and at least one property of the optical cursor and for converting the position and at least one property to corresponding commands to control the computer and move an internal cursor to a position corresponding to the optical cursor while the optical cursor remains within the output displayed on the screen. 40 40
Claim 24 of the ‘214 patent continued : The Court stated that §112(6) does not apply for three reasons: First, the Court stated that the term “processor” connotes sufficient structure, citing the IBM Dictionary of Computing (10 th ed. 1994): (1) In a computer, a functional unit that interprets and executes instructions. A processor consists of at least an instruction control unit and an arithmetic and logic unit. (2) One or more integrated circuits that process coded instructions and perform a task. And citing Webster’s New World Dictionary of Computer Terms (5 th ed. 1994): (1) The CENTRAL PROCESSING UNIT of a computer. 41 41
Claim 24 of the ‘214 patent continued : Second, the Court found that Claim 24 recited the objectives and operations of the processor in the “processor…for” limitation . … for processing the image to detect position of the optical cursor and at least one property of the optical cursor and for converting the position and at least one property to corresponding commands to control the computer and move an internal cursor to a position corresponding to the optical cursor while the optical cursor remains within the output displayed on the screen. Third, the Court stated that one of ordinary skill in the art would understand the structural arrangements of the processor. (This position relied upon extrinsic evidence from a Declaration of an expert in support of Plaintiff’s construction position.) 42 42
Farstone Tech., Inc. v. Apple Inc . (C.D. Cal.) This case involves U.S. Patent No. 7,120,835 (the ‘835 patent) which discloses using the resources of a computer system in a more effective way so as to economize on system resources occupied by conventional backup/recovery software. The Court analyzed Claim 1 of the ‘835 patent and found the claim invoked yet failed to satisfy § 112(6) because the term “backup/recovery module” was indefinite. 43 43
Claim 1 of the ‘835 patent : 1. A computer equipment having a prompt access function, said computer equipment comprising: a processing system having at least one hardware resource with a backup/recovery module , said backup/recovery module creating at least one recovery unit to hold backup data; and a displaying system for displaying backed up data of said processing system, said backed up data of said processing system corresponding to each of said at least one recovery unit, said displaying system having a selecting means, said selecting means selecting a status corresponding to said processing system at the time of creation of each of said at least one recovery unit, said displaying system displaying said selected status; wherein said at least one recovery unit respectively reflects a corresponding status of said at least one hardware resource at the time of creation of each of said at least one recovery unit, said at least one hardware resource can be restored to status at the time of creation of each of said at least one recovery unit. 44 44
Claim 1 of the ‘835 patent continued : The Court first performed part 1 of the Williamson analysis on the term “backup/recovery module.” The Court found that the term “backup/recovery module” is in a format consistent with traditional MPF claim limitations. The prefix “backup/recovery” was found not to impart definite structure into the term “module.” While the specification of the ‘835 patent described the “backup/recovery module” as within the hardware resource of the processing system, the specification failed to impart any structural significance to the term. The Court specifically stated “the claim does not describe how the ‘backup/recovery module’ creates a recovery unit to hold backup data in a way that informs the structural character of the limitation…” Therefore, the Court found the term “backup/recovery module” to invoke MPF treatment. 45 45
Claim 1 of the ‘835 patent continued : The Court then determined whether the specification disclosed sufficient structure that corresponded to the claimed function. The Court stated that “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates structure to the function relied upon in the claim.” The Court held that while the “backup/recovery module” is disclosed as having to be performed by a special purpose computer, the absence of an algorithm (or step-by-step procedure) for performing the steps performed by the “backup/recovery module” rendered such limitation indefinite. 46 46
Claim 1 of the ‘835 patent continued : The Court reviewed the ‘835 patent for disclosure of an algorithm but found that the specification only recited the overall function itself. For example, the Court found that the following sections of the specification lacked the required disclosure of step-by-step functionality: “The status corresponding to the processing system is a status of said computer equipment at the time creating said corresponded recovery unit. The data contained in the processing system corresponding to the recovery unit includes configuration corresponding to the hardware resource and the backup data held in the recovery unit respectively. The displaying system has a user-operating interface.” See col. 4, ll. 44- 50 of the ’835 patent. “Upon the user selects a restore point under the DOS interface, the displaying system 20 displays an option for the user to obtain outcome of recovery operation corresponding to such restore point. If such restore point is selected, the operating system is loaded. After the user confirms that the restore point is the required restore point, the status corresponding to such restore point can be set as a current status.” See col. 6, ll. 64- 67 of the ‘835 patent. 47 47
Claim 1 of the ‘835 patent continued : The Court stated that the descriptions in the specification “do not provide how the recovery unit is actually created by the backup/recovery module.” The Court did not analyze the other term at issue: “processing system” because the claim was already found indefinite. On Jan. 9, 2017, the Supreme Court declined to entertain FarStone's request to review the Federal Circuit’s revised standard for evaluating whether patents involving functional claims are indefinite, leaving intact the invalidation of the ‘835 patent. 48 48
Tele-Publishing v. Facebook (D. Mass) During claim construction in this case, certain claims of U.S. Patent No. 6,253,216 (the ‘216 patent) were found to be invalid as indefinite because the claims were not tied to a specific algorithm that gives instructions for how to perform the claimed software functions. The Court found that the claims were MPF claims that were unsupported by an algorithm. The Court’s analysis of Claim 29 is representative of its finding that the claimed “means to select” other remote users to whom the page - creating remote user may wish to allow access to the personal page was indefinite. The ‘216 patent generally relates to providing a secure manner for displaying personal information of a user to other computer network users on a personal page of the user. 49 49
Claim 29 of the ‘216 patent : In a networked computer system having a plurality of remote users, a computer program product comprising computer useable medium having computer readable program code to: a) store profile information relating to each remote user, the profile information being accessible to other remote users of the system; b) provide a page-creating remote user with means to create a personal page having personal information; c) store attributes representing the personal information in the page- creating remote user's personal page in one or more databases; d) provide the page-creating remote user with means to select other remote users to whom the page-creating remote user may wish to allow access to the personal page; … 50 50
Claim 29 of the ‘216 patent continued : The parties disputed whether the specification provided the corresponding structure for the “means to select” functionality. Plaintiff proposed the following language for the recitation of the structure to support the function: “at least one Web page programmed to retrieve profile information of other remote users and display that profile information for selection by other remote users” 51 51
Claim 29 of the ‘216 patent continued : Plaintiff cited to portions of the specification that describe the general apparatus for providing a personal page to users. Specifically: “Personal ads placed via the call centers 16 1 -16 i may be posted on a clients web site via the server 54.” See col. 5, ll. 40- 42 of the ‘216 patent; and “An exemplary database structure useful with invention is illustrated in FIG. 3. User Information Table 126 may be used by a PON [Personals Online Network] system to store a variety of information relating to users of the system.” See col. 7, ll. 31- 34 of the ‘216 patent See also cited col. 6, l. 6 – col. 7, l. 18 which discusses actions performed by a remote user computer on a network. 52 52
Claim 29 of the ‘216 patent continued : The Court reviewed the cited portions put forth by the Plaintiff and stated that the only mention of searching, as implied in the “means to select” step, is a statement: “[t]he [Personal On -line Network] may provide searching facilities which allow users of the system to search other users’ profiles in an attempt to find a match.” Citing col. 7, ll. 16- 18 of the ‘216 patent. The Court held that “[t]his statement, along with the description of the apparatus cited by [Plaintiff], does not adequately describe the structure of the claimed function and does not contain the language [Plaintiff] proposes for the structure.” Thus, the Court found the claims reciting “means to select” were indefinite because the “‘specification contains no description of the structure or the process,’ in this case, the algorithm, that the system ‘uses to perform the [means to select] function.” 53 53
Cases distinguishing Williamson : Finjan, Inc. v. Proofpoint, Inc. , 2015 U.S. Dist. LEXIS 162504 (N.D. Cal. Dec. 3, 2015); Collaborative Agreements, LLC v. Adobe Sys. , 2015 U.S. Dist. LEXIS 161809 (N.D. Cal. Dec. 2, 2015); and Triplay, Inc. v. Whatsapp, Inc. , 2016 U.S. Dist. LEXIS 157680 (D. Del. Nov. 15, 2016). 54 54
Finjan, Inc. v. Proofpoint, Inc. (N.D. Cal.) This case involved several patents-in-suit generally directed to securing computers from malicious code. At issue was the construction of Claim 1 of U.S. Patent No. 8,141,154 (the ‘154 patent) and whether claim recited MPF language. 55 55
Claim 1 of the ‘154 patent : A system for protecting a computer from dynamically generated malicious content, comprising: a content processor (i) for processing content received over a network, the content including a call to a first function, and the call including an input, and (ii) for invoking a second function with the input, only if a security computer indicates that such invocation is safe ; a transmitter for transmitting the input to the security computer for inspection, when the first function is invoked; and a receiver for receiving an indicator from the security computer whether it is safe to invoke the second function with the input. 56 56
Claim 1 of the ‘154 patent continued : The parties disputed whether the phrase “ a content processor (i) for processing …., and (ii) for invoking… ” is MPF language that must be construed under §112(6). The Court summarized its analysis technique under Williamson by stating that instead of presuming that the §112(6) does not apply when a term does not use “means,” the Courts must now: Ask 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. If a term lacks the words “means,” the presumption can be overcome, but §112(6) will apply when a challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. 57 57
Claim 1 of the ‘154 patent continued : The Court found that the term “content processor” has a sufficiently specific structure. The Court supported its position by stating that the claim itself describes how the content processor interacts with other components, which provides the terms’ structural character. The Court also found that the specification supported the structure and function of the content processor: “Gateway computer 405 receives content, such as web content, from a network, over communication channel 420. Client computer 410 includes a content processor 470, such as a web browser, which processes content received from the network.” see col. 15, ll. 33- 36 and FIGS. 2 and 3 of the ‘154 patent. “[S]aid content processor (i) suspends processing of the content after said transmitter transmits the input to the security computer, and (ii) resumes processing of the content after said receiver receives the indicator from the security computer.” See col. 17, ll. 32-49 and col. 18, ll. 7- 22 of the ‘154 patent. 58 58
Claim 1 of the ‘154 patent continued : The Court reasoned that “[u]nlike Williamson , where the term ‘module’ was ‘simply a generic description for software or hardware that performs a specified function,’… here, the intrinsic evidence [the claim itself and the specification] established the structural character of the ‘content processor’ through its interactions with the system’s other components.” Therefore, the Court held that §112(6) does not apply. 59 59
Collaborative Agreements, LLC v. Adobe Sys. (N.D. Cal.) This case involved U.S. Patent No. 8,271,393 (the ‘393 patent), directed to a system for facilitating secure network transactions of electronic documents between two or more parties. The claim terms at issue were: “code segment for…” in claims 25 and 36; and “computer readable medium encoded with a computer program” in claims 49 and 60. The threshold question was whether the terms constitute MPF limitations. 60 60
Claim 25 of the ‘393 patent : a code segment for receiving one or more electronic documents and an identity validation at a server computer via a network from a client communications device of a first party to the transaction … a code segment for receiving registration information at the server computer via the network from the client communications device of a second party to the transaction wherein the registration information comprises the identity validation of the second party; a code segment for assigning the transaction to an account on the server computer that is accessible via the network; a code segment for posting the received electronic documents to the account on the server computer such that the client communications device of the second party can access the posted electronic documents via the network; a code segment for providing the second party with access to the received electronic documents; and a code segment for whenever an acceptance of any of the one or more electronic documents is received by the server computer from the client communications device of the second party, attaching the identity validation from the first party and the second party to the accepted one or more electronic documents. 61 61
Claim 25 of the ‘393 patent continued : Turning first to the “code segment” instances in the claims, the Court stated that the term “code segment” suggests some kind of structure as evidenced by the Plaintiff’s provided dictionary definition – Microsoft Press Computing Dictionary 96 (3d. 1997): 1. A memory segment containing program instructions. 2. A named and segregated portion of a program’s code typically performing a specific class of operations. Code segments in this sense are often loaded into memory as memory segments. The main program segment is kept in memory, and auxiliary segments are loaded only when they are required. The Court then stated that the claim language provides a description as to how each recited “code segment” operates. 62 62
Claim 25 of the ‘393 patent continued : The Court stated that Claim 25 does not simply describe broadly phrased high- level functions such as “receiving communications” or “coordinating the operation of the streaming data module,” as in Williamson… Rather, the Court found that Claim 25 describes the objective and operation of the code segment as: “receiving one or more electronic documents and an identity validation at a server computer” The Court also found Claim 25 to describe the structural interactions among • the computer program’s code segment components: “code segment for receiving one or more electronic documents . . . code segment for posting the received documents . . . code segment for providing the second party with access to the received documents . . . ” 63 63
Claim 25 of the ‘393 patent continued : The Court equated the claim terms “code segment” to “circuit” from Linear Tech. Corp. v. Impala Linear Corp. , which was found to not invoke MPF treatment. Thus the Court held that the term “code segment” should not be treated as a MPF limitation because: “code segment” has structural meaning, as supported by the extrinsic dictionary definition provided by the Plaintiff, and is therefore not a “nonce” word; and The claim language describes the code segment’s operation with a degree of specificity not present in Williamson . 64 64
Claim 49 of the ‘393 patent : A system for facilitating a transaction between two or more parties comprising: a network interface; one or more data storage devices; one or more processors communicably coupled to the network interface and the data storage devices; and a non-transitory computer readable medium encoded with a computer program communicably coupled to the processors to (a) receive one or more electronic documents and an identity validation via the network interface from a client communications device of a first party to the transaction... 65 65
Claim 49 of the ‘393 patent continued : Turning to the claim language “computer readable medium encoded with a computer program,” the Court applied the same analysis it did for “code segment” and reached the same conclusion. In so holding, the Court: Equated the terms “code segment” and “computer program” and found that software was “still implicated.” Noted that the claim language lacked the word “means”; and Reasoned that the same analysis for “code segment” was largely applicable – “software has some structural meaning, and the surrounding claim language provides sufficient specificity as to how the software operates.” The Court further stated that Linear Tech. Corp. , not Williamson , governs because “computer readable medium encoded with a computer program” implicates not only software but also hardware; thus there is a strong analogy to the “circuit” at issue in Linear Tech. Corp . 66 66
Triplay, Inc. v. Whatsapp, Inc. (D. Del.) This case involved patents-in-suit generally directed to cross-platform messaging technology. Among the claim construction issues addressed in this case was whether the terms “access block” and “media block” recited in Claim 1 of U.S. Patent No. 8,332,475 (the ‘475 patent) and Claim 9 of U.S. Patent No. 8,874,677 (the ‘677 patent) should be construed as MPF claim elements. The Court found they should not. Claim 1 of the ‘475 patent is representative. • 67 67
Claim 1 of the ‘475 patent : A system for message communication via a communication media between one or more originating communication devices assigned to a sender and one or more destination communication devices assigned to a receiver, the system comprising: a) an access block configured to receive, directly or indirectly, from at least one originating communication device a message having initial characteristics comprising, at least message format and an initial message layout, and to transmit the message to at least one destination communication device; b) a media block operatively coupled to said access block and configured to select, before transmitting, at least one message format and a message layout for each of the at least one message formats fitting to each of said at least one destination device, and to then convert at least said initial message layout to the selected message layouts, said selection and conversion being done in accordance with at least one criterion selected from a group comprising: … 68 68
Claim 1 of the ‘475 patent continued : With regard to the term “access block,” the parties disputed whether the term was purely functional. In addressing this concern, the Court analyzed whether the term invoked MPF treatment under §112, paragraph 6. The Court, in adopting Magistrate Judge Christopher J. Burke’s Report and Recommendation, found the instant case to be distinguishable from Williamson , holding that the ‘475 and ‘677 patents’ specifications included significantly more detail than the specification of the patent-in-suit in Williamson . 69 69
Claim 1 of the ‘475 patent continued : The Court relied heavily on Apple v. Motorola , 757 F .3d 1286 (Fed. Cir. 2014) in its analysis, stating: “[b]ecause software does not contain physical structures, persons skilled in the art may understand a computer- implemented invention’s structure ‘through, for example, an outline of an algorithm, a flowchart, or a specific set of instructions or rules.’ A claim term relating to such an invention may also have significant structure where there is a description of the term’s ‘operation, such as its input, output, or connections.’ ‘The limitation’s operation is more than just its function; it is how the function is achieved in the context of the invention.’” 70 70
Claim 1 of the ‘475 patent continued : The Court concluded that the term “access block” connotes sufficiently definite structure to a person of ordinary skill in the art. The Court stated: “[I]t is important to keep in mind that when the patent is describing an ‘access block’ and what it does, it is articulating how certain hardware and software (i.e., a computer configured in a certain way) is meant to work… [I]t would be ‘fruitless’ to expect such a description to, in all instance, make reference to ‘traditional physical structure...’ That the term is ‘defined partly in terms of its function does not detract from the definiteness of [the] structure it may connote.’” 71 71
Claim 1 of the ‘475 patent continued : The Court concluded: “[T]he patent not only describes what the role of the ‘access block’ plays in the overall message communication system and how the ‘access block’ is connected to various other parts of that system – but… [C]rucially, that the patent also describes what the required components of an ‘access block’ are and how those components work to take in and send out information.” ( citations to specification omitted ) The Court, therefore, found that the §112, paragraph 6 does not apply to the term “access block.” For similar reasoning, the Court also found that MPF treatment was not proper with regards to the term “media block.” 72 72
Functional Claiming In Software Patents 73
Functional Claiming In Software Patents A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. Id. The statute authorizes functional claiming. MPEP §§ 2173.05(g) and 2181. 74 74
Claim Scope Impact A claim invoking 112(f) “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof .” 35 U.S.C. 112(f). Scope is limited “to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof .” Williamson v. Citrix , 792 F . 3d 1339, 1347 (Fed. Cir. 2015). 112(f) may limit claim scope 75
Disclosure Burden Impacts “Even if the specification discloses corresponding structure, the disclosure must be of ‘ adequate ’ corresponding structure to achieve the claimed function.’” Williamson v. Citrix , 792 F . 3d at 1352. For software, “[w]e require that the specification disclose an algorithm for performing the claimed function.” Id . “Adequacy” is hard to reconstruct after-the-fact. Id. at 1354 (“The testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification .”) Dictionaries Prior Art Expert testimony 112(f) may impose a higher disclosure burden 76
Written Description Impact A claim satisfies the written description requirement when “the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date .“ Ariad v. Eli Lilly, 598 F . 3d 1336, 1351 (Fed. Cir. 2010) ( en banc ). A claim invoking 112(f) “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 112(f) may mean W/D requirement met 77
Enablement Impact “[T]o be enabling , the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’." In re Wright, 999 F . 2d 1557, 1561, (Fed. Cir. 1993). Enablement serves the dual function of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention. Broad claim language is used at the peril of losing any claim that cannot be enabled across its full scope. MPEP 2164.06(a)(I). 112(f) constrains claim scope to the disclosure (and equivalents) 78
Nonce Word Claiming - Definiteness Impact Functional term not per se indefinite. Cox Comm. Inc. v. Sprint Comm. Co., LLC , -- F .3d -- (Fed. Cir. Sept. 23 2016) “1. A method of operating a processing system to control a packet communication system…” DC: Invalid as indefinite. Structural limitation functionally described did not pass Nautilus . FC: Reversed. “All of the asserted claims are method claims, and the point of novelty resides with the steps of these methods, not with the machine that performs them. ‘“Processing system’ is merely the locus at which the steps are being performed .” “If ‘processing system’ does not discernably alter the scope of the claims, it is difficult to see how this term would prevent the claims (…from serving their notice function under § 112, ¶ 2 .” “Claims are not per se indefinite merely because they contain functional language .” 79
Abstractness Inquiry Impact “[T]there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general .” Electric Power Group v. Alstom , No. 2015-1778, slip op. at 11 (Fed. Cir. 2016). “ A patent may issue ‘for the means or method of producing a certain result, or effect, and not for the result or effect produced .’” McRO v. Bandai Namco , No. 2015-1080, slip op. at 23 (Fed. Cir. 2016) (citing Diamond v. Diehr ). Enfish v. Microsoft , No. 2015-1244, slip op. at 13-18 (Fed. Cir. 2016) (claims invoked 112(f), so focus was on specification). 112(f) may help with §101 eligibility 80
Is an Algorithm “Structure”? For a software claim element invoking 112(f), the specification must “disclose an algorithm for performing the claimed function .” Williamson at 1352. Before Williamson , “ a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software .” Eon Corp v. AT&T Mobility , 785 F . 3d 616, 622 (Fed. Cir. 2015). Under Eon Corp. , the algorithm was part of the “structure,” urging against 112(f) application. But cases since Williamson vary on this issue 81
Is an Algorithm “Structure”? Media Rights Technologies v. Capital One Financial Corp ., 800 F .3d 1366 (Fed. Cir. 2015): 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. Rather, the claims simply state that the ‘compliance mechanism’ can perform various functions. But -- Language of 112: “structure , material, or acts .” 82
Programmed Computer Functions Programmed computer functions require a computer programmed with an “algorithm” to perform the function o An algorithm is a step-by-step procedure for accomplishing a given result. o Can be expressed in various ways “in any understandable terms including as a mathematical formula, in prose or as a flow chart, or in any other manner that provides sufficient structure.” o Amount of disclosure of an algorithm is analyzed on a case- by-case basis 83
Programmed Computer Functions Two types of computer-implemented functions: Specialized functions: functions other than those commonly known in the art, often described by courts as requiring “special programming” for a general purpose computer or computer component to perform the function. o Ex. means for matching incoming orders with inventory on a pro rata basis Non-specialized functions: functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component o Ex. means for storing data 84
Programmed Computer Functions Specialized v. Non-specialized functions: With respect to computer-implemented functional claims, a "microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." EON, 785 F .3d at 623 (Fed. Cir. 2015) . 85
Programmed Computer Functions A specialized function must be supported in the • specification by the computer and the algorithm that the computer uses to perform the claimed specialized function The default rule for § 112(f) programmed computer claim o limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function Disclosure of the step by step procedure for specialized functions o establishes clear, definite boundaries and notifies the public of the claim scope Claiming a processor to perform a specialized function without o disclosing the internal structure of the processor in the form of an algorithm , results in claims that exhibit the ‘overbreadth inherent in open- ended functional claims’ Halliburton Energy Services 86
Specialized Computer-Implemented Function • The corresponding structure in the specification that supports a § 112(f) limitation that recites a specialized function is: o A general purpose computer or computer component along with the algorithm that the computer uses to perform the claimed specialized function The disclosure requirement under § 112(f) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed function 87
Specialized Computer-Implemented Function A § 112(f) specially programmed computer limitation is construed as: Means for performing a specialized function = • [ computer/component + algorithm described in the supporting disclosure for performing the entire claimed function] The “structure” in this case is the hardware plus • the algorithm that the hardware uses to perform the function A generic reference to hardware alone or hardware • with “software” is not sufficient support for specialized functions 88
Specialized Computer-Implemented Function AGIS v. Life360 , 830 F .3d 1341 (Fed. Cir. 2016): Accused product -- mobile app designed to help families stay connected Claim term – “a symbol generator connected to [ a ] CPU and [ a ] database for generating symbols on [ a ] touch screen display screen .” 89
Specialized Computer-Implemented Function AGIS v. Life360 , 830 F .3d 1341 (Fed. Cir. 2016): Unrebutted expert testimony that one reading the spec. would know the symbol generator was a known class of structures/software modules. Fed. Cir.: Symbol=known; Generator=known; Symbol generator=abstraction. 90
Specialized Computer-Implemented Function AGIS v. Life360 , 830 F .3d 1341 (Fed. Cir. 2016): The term ‘symbol generator’ invoked 112(f) because it fails to describe a sufficient structure and otherwise recites abstract elements "for" causing actions. It “is a term coined for the purposes of the patents -in- suit. The term is not used in ‘common parlance or by persons of skill in the pertinent art to designate structure’ such that it connotes sufficient structure to avoid the application of 35 U.S.C. § 112, ¶ 6. 91
Specialized Computer-Implemented Function Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS 16549 (N.D. Cal. Feb. 6, 2017) Claim term: “ initial motion recognition module ” 92
Specialized Computer-Implemented Function Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS 16549 (N.D. Cal. Feb. 6, 2017) Claim term: “ initial motion recognition module ” the initial motion recognition module performing an initial recognition with respect to motion data acquired by a sensor, and providing m*Fs frames of motion data prior to the motion trigger point, motion data regarding the motion trigger point, and n*Fs-1 frames of motion data after the motion trigger point to the data storage module for storage, m and n denoting a predefined positive integer, and Fs denoting a sampling rate, and wherein one frame of motion data is a collection of data collected by various sensors at the same sampling moment. 93
Specialized Computer-Implemented Function Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS 16549 (N.D. Cal. Feb. 6, 2017) Challenger: “initial motion recognition module” performs a specialized function and thus requires a specialized computer, but no algorithm is disclosed to connote structure. Court: Williamson does not stand for the proposition that module automatically “places it among terms such as ‘means’” thus triggering the 112(f) presumption. 94
Specialized Computer-Implemented Function Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS 16549 (N.D. Cal. Feb. 6, 2017) Court: rebuttable presumption that 112(f) does not apply. There is adequate structure: look at claim language. The specification “clearly identifies the initial motion recognition module and describes its structure and the process for carrying out initial motion recognition.” The specification allows one of skill to understand “what it does” and “how it does it.” 95
Non-specialized Computer-Implemented Function A non-specialized computer function can be adequately • supported in the specification by a general purpose computer Applies to functions that can be accomplished by any o general purpose computer without special programming It is only in rare circumstances that an algorithm need not o be disclosed In those situations, make the record clear, if necessary, o that the function is a non-specialized function and therefore no disclosure of an algorithm is required Note that a known prior art device (any general purpose o computer) that performs the claimed function would anticipate the limitation 96
Non-specialized Computer-Implemented Function The corresponding structure in the specification that • supports a § 112(f) limitation that recites a non- specialized function is: o A general purpose computer or a known computer component that is recognized by those of ordinary skill in the art as typically including structure and basic programming, if needed, to perform the claimed function o No disclosure of a specific algorithm is required Sufficient supporting structure for a “means for storing data” could be a known memory device, such as a RAM, recognized by those skilled in the art as sufficient structure for storing data 97
Non-specialized Computer-Implemented Function Fitbit v. Aliph Corp., 2017 U.S. Dist. LEXIS 12657 (N.D. Cal. • Jan. 27, 2017) [Wearable activity trackers] o Claim terms: "[the second device / the first device / the other device / the at least one client device / the client device] sending a signal to a server that indicates the start of the pairing process" o Neither the claims nor the specification provide much detail about this function; instead, it appears to be a simple transmission of a data signal from the client to the server. The specification makes only one passing mention of it and simply states that "the client tells the server to begin a pairing process." 98
Non-specialized Computer-Implemented Function Fitbit v. Aliph Corp., 2017 U.S. Dist. LEXIS 12657 (N.D. • Cal. Jan. 27, 2017) [Wearable activity trackers] o Given the relatively simple nature of this function, the "[second/other/client/first] device" is sufficiently definite structure, as this term requires a device that has the basic, general-purpose computing ability to transmit a data signal. 99
Non-specialized Computer-Implemented Function Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. • LEXIS 16549 (N.D. Cal. Feb. 6, 2017) o Claim term: “ data storage module ” o Presumption not triggered. o The term "data storage module" contains enough structure in itself and as supported by the specification. o It is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function. 100
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