“When ‘determining whether software limitations like those at issue here recite sufficient structure, we can look beyond the initial ‘code’ or ‘application’ term to the functional language to see if a person of ordinary skill would have understood the claim limitation as a whole to connote sufficiently definite structure.’” – CAFC
Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Western District of Texas that Dyfan, LLC’s claims were invalid as indefinite. The CAFC concluded that the disputed claim limitations were not drafted in means-plus-function format, and therefore 35 U.S.C. § 112 ¶ 6 did not apply.
Patent owner Dyfan sued Target Corp. for infringement of various claims of U.S. Patent Nos. 9,973,899 and 10,194,292. Following a claim construction hearing, the district court found that the disputed (1) “code”/“application” limitations and (2) “system” limitations of the patents-in-suit were invalid as indefinite.
Specifically, the district court found that: (1) these claim limitations of the patents-in-suit are in means-plus-function format under Section 112 ¶ 6 and (2) the specification does not disclose sufficient structure corresponding to the recited functions. Dyfan subsequently appealed.
The patents-in-suit relate to communication systems that deliver messages to users “tailored to their particular interests or needs based on their presence within a specified location, such as a shopping center” with different retail stores. Exemplary systems include “a building” having “broadcast short-range communications units” at fixed locations that broadcast messages to mobile devices within communications range of the respective units. The mobile devices execute “applications” or “code” to receive and process the broadcast messages. A server then communicates with the mobile devices via the internet to provide location-relevant information.
Section 112 ¶ 6 applies when a patent applicant can recite, in the claim, a function without reciting structure for performing the function and limit the claims to the structure, materials, or acts disclosed in the specification (or their equivalents). Limitations that invoke Section 112 ¶ 6 are generally known as “means-plus-function” or “step-plus-function” limitations.
The District Court Ignored Expert Testimony Regarding the ‘Code’/’Application’ Limitations
Regarding the “code”/“application” limitations, the district court correctly started with the presumption that Section 112 ¶ 6 does not apply because “means” does not appear in the claim limitation. However, the CAFC disagreed with the district court and instead found that Target did not overcome this presumption because it failed to show, by a preponderance of the evidence, that persons of ordinary skill in the art (POSITA) would not have understood the “code”/“application” limitations to connote structure in light of the claim as a whole.
In particular, the Federal Circuit found the district court “ignor[ed] key evidence—unrebutted deposition testimony from Target’s own expert, Dr. Goldberg—regarding how a person of ordinary skill would have understood the “code”/“application” limitations.”
Dr. Goldberg explained that “code” and “application”, which themselves connote structure, in combination with the recitation of the code or application’s operation would have connoted structure to persons of ordinary skill. He also stated that POSITA would have known of off-the-shelf code and applications for displaying any desired information.
For example, he testified that “application” would have been commonly understood to mean a “computer program intended to provide some service to a user,” and that developers could have, at the relevant time, selected existing “off-the-shelf software” to perform specific services and functions.
He added that a POSITA would understand that “code” is “a bunch of software instructions” and that the claimed function of displaying information could be implemented using “off-the-shelf” code or applications. Dr. Goldberg’s testimony therefore clearly demonstrated that the claim limitations do not recite “purely functional language” and the “code”/“application” limitations connote a class of structures to a person of ordinary skill.
Further, the district court failed to consider a recent Federal Circuit decision in Zeroclick, LLC v. Apple, Inc. There, the CAFC stated that a POSITA would have been able to discern that the disputed limitations “program” and “user interface code” were references to conventional structures known to the POSITA. The district court failed to properly apply the presumption against the application of Section 112 ¶ 6 and to provide evidence showing these limitations were used as a substitute for “means.” Thus, the CAFC rejected the district court’s application of Section 112 ¶ 6 on the claims.
The CAFC also highlighted that the “specific structure of software code and applications is partly defined by its function.” The court instructed that when “determining whether software limitations like those at issue here recite sufficient structure, we can look beyond the initial ‘code’ or ‘application’ term to the functional language to see if a person of ordinary skill would have understood the claim limitation as a whole to connote sufficiently definite structure.”
Ultimately, the court ruled that the “code”/“application” limitations are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.
‘System’ is Not Necessarily a Nonce Term Used as a Substitute for ‘Means’
Regarding the disputed “systems” limitations, the CAFC held that the district court failed to properly apply the presumption that Section 112 ¶ 6 does not apply if the limitation does not recite “means,” as the case is here. Additionally, the CAFC found Target did not overcome this presumption by a preponderance of the evidence because it failed to provide evidence that the “system” limitation fails to recite sufficiently definite structure. Both the district court and Target claimed that “system” may be a nonce word used as a substitute for the word “means.” The CAFC acknowledged that “system” can be a nonce term, but in the present case, the claim language itself defines the “system” to include specified structure.
In the representative claim 15, the “system” limitation in the wherein clause derives antecedent basis from the “system” recited in the preamble, which the claim states comprises “a building” having “a first broadcast short-range communications unit,” “a second broadcast short-range communications unit,” “code” executed by at least one “mobile device,” and “at least one server.” Each of these limitations are structural components of the “system.”
The CAFC disagreed with the district court’s assertion that the claims do not specify which of the components in the system perform the recited function in the wherein clause, which specifies that “the system is configured such that the first visual information is automatically caused to be output . . . and the second visual information is automatically caused to be output.” But the court pointed out that the claim limitations preceding the wherein clause make clear that the “code” causes the output (or display) of visual information based on “location-relevant information.”
Thus, the CAFC concluded that the “system” limitations are not written in mean-plus-function format because they connote sufficiently definite structure to a person of ordinary skill in the art. The court also added that “poor claim drafting does not allow courts to bypass the presumption that a claim does not invoke § 112 ¶ 6 in the absence of the word ‘means.’ Not does it relieve courts of their duty to evaluate whether that presumption has been overcome.”
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