Media Rights Technologies v. Capital One: Williamson v. Citrix applied

By Jason Rantanen

Media Rights Technologies, Inc. v. Capital One Financial Corporation (Fed. Cir. 2015) Download opinion
Panel: O’Malley (author), Plager and Taranto

Earlier this summer, the Federal Circuit issued a revised opinion in Williamson v. Citrix Online.  The centerpiece of the new opinion was Part II.C.1, joined by a majority of the entire court.  That section overruled past precedent holding that non-use of the words “means” or “step” in a claim created a “strong” presumption that § 112, para. 6 does not apply, one that is only overcome by “a showing that the limitation essentially is devoid of anything that can be construed as structure.”   Instead, the en banc court held, the presumption can be overcome “if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function'”  Williamson, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).

On the surface, Media Rights Technologies v. Capital One involves a relatively straightforward application of Williamson.  But there are several aspects of the decision that make it stand out: the statement of the law of indefiniteness (Judge O’Malley’s first since Nautilus), the sharpness and depth of its analysis of the § 112, para. 6 issue, the holding that the specification must disclose structure for all claimed functions, and the use of factual evidence in the indefiniteness determination.

Claim 1 of Patent No. 7,316,033 is the illustrative claim.  At issue was the term “compliance mechanism.”

A method of preventing unauthorized recording of electronic media comprising:

Activating a compliance mechanism in response to receiving media content by a client system, said compliance mechanism coupled to said client system, said client system having a media content presentation application operable thereon and coupled to said compliance mechanism;

Controlling a data output pathway of said client system with said compliance mechanism by diverting a commonly used data pathway of said media player application to a controlled data pathway monitored by said compliance mechanism; and

Directing said media content to a custom media device coupled to said compliance mechanism via said data output path, for selectively restricting output of said media content.

Multiple claim meanings: The Federal Circuit’s discussion begins with what  appears to be a routine summary of the law of indefiniteness:

A claim fails to satisfy this statutory requirement [§ 112, para. 2] and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Notably, a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.” Id. at 2130 n.8 (quotation omitted).

Slip Op. at 7. While the first part of this passage is well known, but the second part is interesting because it does not merely embrace the Court’s opinion in Nautilus, but goes beyond.  Footnote 8 is actually a quotation from a district court opinion, dropped in the context of pointing out that the Federal Circuit’s “insolubly ambiguous” standard “can breed lower court confusion.”  It reads:

8. See, e.g., Every Penny Counts, Inc. v. Wells Fargo Bank, N. A., ––– F.Supp.2d ––––, ––––, 2014 WL 869092, *4 (M.D.Fla., Mar. 5, 2014) (finding that “the account,” as used in claim, “lacks definiteness,” because it might mean several different things and “no informed and confident choice is available among the contending definitions,” but that “the extent of the indefiniteness … falls far short of the ‘insoluble ambiguity’ required to invalidate the claim”).

Put another way, Judge O’Malley is not merely quoting Nautilus; she is adopting a standard that is not directly mandated by the opinion.  (To be clear, I think the language adopted here is in line with Nautilus, and perhaps even indirectly mandated by the decision.  Also, it is not the first time this language has appeared in a post-Nautilus decision.  Judge Chen quoted it in Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014), but not as a firm statement of the law.)

The §112, para. 6 analysis: The appeal presented two issues related to “compliance mechanism”: whether it is a means-plus-function term and, if so, whether the specification discloses corresponding structure.  Under Williamson, the lack of the word “means” creates a rebuttable presumption that “compliance mechanism” is not a means-plus-function term.  Here, the patent holder neither contended that “compliance mechanism” had a commonly understood meaning nor that it is generally understood in the art to connote a particular structure.  Instead, Media Rights Technologies argued that “compliance mechanism” was like the term “modernizing device” found to be definite in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  Not so, said the court.

Here, unlike Inventio, 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. A review of the intrinsic record does not change this conclusion. The written description only depicts and describes how what is referred to as the “copyright compliance mechanism” is connected to various parts of the system, how the “copyright compliance mechanism” functions, and the potential—though not mandatory—functional components of the “copyright compliance mechanism.” See ’033 Patent col. 18:57–col. 19:5; col. 20:32–49; Fig. 3; Fig. 5B. None of these passages, however, define “compliance mechanism” in specific structural terms. And, the addition of the term “copyright compliance mechanism” in the specification only confuses the issue further. Media Rights does not contend that “copyright compliance mechanism” is the equivalent of the electrical circuit detailed in the written description at issue in Inventio. Indeed, Media Rights asserts that the “copyright compliance mechanism”—the only “compliance mechanism” referenced outside the claims and the summary of the invention, and the only one depicted in the figures to which it points—is narrower than the structure it claims as the “compliance mechanism.” Without more, we cannot find that the claims, when read in light of the specification, provide sufficient structure for the “compliance  mechanism” term.

Slip Op. at 10.  Furthermore, Inventio was a pre-Williamson decision, and was decided under now-superceded case law that imposed a “heavy presumption” against finding a claim term to be in means-plus-function format.  “Because we apply no such heavy presumption here, and the description of the structure to which Media Rights points is far less detailed than in Inventio, we do not believe Inventio carries the weight Media Rights attaches to it.”  Slip Op. at 11.

All functions must be disclosed  Since the claim was a means-plus-function term, the court turned to the question of whether the specification disclosed corresponding structure.  “Where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.”  Slip Op. at 12 (emphasis in original).  Here, there were four claimed functions, so the specification needed to disclose adequate structure to achieve all four of the claimed functions.  And because these were computer-implemented functions, “the specification must disclose an algorithm for performing the claimed function.”  Id. at 13.  Claims that fail to disclose sufficient corresponding structure are invalid for indefiniteness.

Factual evidence in the indefiniteness determination:
Examining the question of whether such an algorithm was disclosed, the court considered the specification’s recitation of source code that Media Rights contended was sufficient.  Since the court could not read the code outright, it needed to look to “expert witness testimony to determine what that source code discloses at an algorithmic level.”  Slip Op. at 14. (Media Rights apparently conceded to this at oral argument.)  The unrebutted expert testimony was that the code returned only various error messages.  From this, the court concluded that “[t]he cited algorithm does not, accordingly, explain how to perform the diverting function, making the disclosure inadequate.”  Id.  In addition, the court held that there was no corresponding structure for another function because “the cited portion of the specification provides no detail about the rules themselves or how the ‘copyright compliance mechanism’ determines whether the rules are being enforced.”  Id.  The consequence was that all of the patent’s claims (all containing the term “compliance mechanism”) were invalid due to indefiniteness

90 thoughts on “Media Rights Technologies v. Capital One: Williamson v. Citrix applied

  1. 6

    When I saw the header “all functions must be disclosed” I was about to take victory lap over Ned on our one major disagreement, but it turns out it’s a statement that all the functions were in 112f and therefore must be disclosed, which I assume he gives me and is nothing new.

    Kudos to the correct attack on the claims, by arguing it is 112b in view of f or in the alternative a 101 violation. I would have gone with 112a written description instead of 101, but it’s always important to make both issues to cover yourself on claim construction.

    There’s very little to see here. This is the same worthless disclosure I so often see in the software arts where the entire disclosure is telling you what it does rather than what it is.

    If the office really wanted to clear out the trash it would allow examiners to implement a 112a review prior to doing any 103 work so we could avoid having to search when there clearly hasn’t been the disclosure of anything that could be an invention. Algorithms are the name of the game in software, not functional results, regardless of if you’re in 112f or not.

    1. 6.1

      Random, excellent points here on both aspects of the problem about “compliance mechanism.” A compliance mechanism is not well known structure. Therefore there must be some structure described in the specification that may perform the four claimed functions to support the claiming of “compliance mechanism.” If the specification fails to disclose that structure, the problem is 112(a) problem, not necessarily a 112(b) problem. We don’t have to get into the two-step about means plus function. The problem is much more general, not necessarily limited to the use of “mechanism” or “means,” and should be viewed as such. For example, claiming a processor, a circuit, a doohickey that does a number of functions doesn’t claim specific structure. It claims nothing more than the functions themselves.

      Also I agree that the examiners need to conduct an examination with respect to 112 prior to conducting a search such that the claims they search are definite.

      1. 6.1.1

        A compliance mechanism is not well known structure.

        Let’s say that these guys had disclosed an “algorithm” with “sufficient” fake structure and published it around the world on the front page of every newspaper in the country.

        Would “compliance mechanism” be “well-known structure” then?

        Rhetorical question.

        1. 6.1.1.1

          MM, let us assume that a compliance mechanism was defined to be a computer executing a particular set of algorithms such that one of ordinary skill in the art could implement the algorithms in a computer without any undue experimentation. I think this might be sufficient corresponding structure such that the claim would be supported and not indefinite.

          But of course, invention cannot be in the algorithms themselves because they do not appear in the claim. The claims would then violate § 112 (b) because they were not particular point out the invention.

          1. 6.1.1.1.1

            let us assume that a compliance mechanism was defined to be a computer executing a particular set of algorithms such that one of ordinary skill in the art could implement the algorithms in a computer without any undue experimentation. I think this might be sufficient corresponding structure such that the claim would be supported and not indefinite.

            Can you recite boilerplate like that in your claim to exclude the non-obvious fake “structures” as well?

            Rhetorical question.

            1. 6.1.1.1.1.1

              MM, let’s take Diehr as a possible example of a context. Instead of claiming the particular algorithm in the claim, which of course is old, I instead claimed a “mold-time recalculation mechanism.” This mold-time recalculation mechanism is claimed to be connected to thermocouples located inside the mold that continuously monitor the temperature inside the mold during the molding process and that provide real-time temperature inputs to the mold-time recalculation mechanism.

              Since a mold-time recalculation mechanism is not known structure, the claim would be both indefinite and unsupported but for the fact the specification discloses a programmed computer, programmed to implement the Arrhenius equation, which equation is old. So at least this mechanism is definite, but not new.

              Further, because the invention is in the combination of thermocouples located inside the mold providing temperature inputs to the old mechanism on a real-time basis, there is no claiming a result in violation of Morse.

              So the bottom line is that I think this form of claim has no problem under the patent laws.

              1. 6.1.1.1.1.1.1

                Ned,

                You are aware that Malcolm is on record as stating that the Diehr case was wrongly decided, eh?

          2. 6.1.1.1.2

            let us assume that a compliance mechanism was defined to be a computer executing a particular set of algorithms such that one of ordinary skill in the art could implement the algorithms in a computer without any undue experimentation.

            A computer with appropriate programming to achieve a result that was enabled without undue experimentation is precisely what Aristocrat made clear was insufficient.

            Unless the function is so particularly defined that theres only a few ways to do it (such that one of skill can immediate “visualize” it is the standard) the algorithm isn’t in sufficient enough detail. Regardless, the specification must contain the specification when in means plus.

            I don’t think we have any disagreement about that. I think the only question is whether the algorithm must be included when 1) the function is enabled and 2) at least one means of achieving teh function is well known. I argue that it must be disclosed because when you are out of 112f, the claim is to every way of doing something, and the most the spec + art can know is what everyone else knew + what the inventor taught (which likely can’t be shown to fill the scope of every way of doing something). I believe you argue that prior known enablement of the function limits the scope to the methods known at the time?

            1. 6.1.1.1.2.1

              Random, when invention lines in a combination of elements or sequence of steps, A + B + C, then any element may be claimed functionally without violating Morse. See, Faulkner v. Gibbs.

              The only issue then becomes support for the claim element, and whether it can be implemented for its full scope without undue experimentation.

              I think that is what we have here with “compliance means.” The details of how to implement a compliance means does not appear to be the invention. What the compliance means does in relation to the other elements of the claim looks to be what is claimed to be new.

              However, the claim subject matter has the odor of 101 unpatentability about it. I think the patent owner might be wasting his money here.

              1. 6.1.1.1.2.1.1

                Ned,

                Why do you insist on referencing a pre-1952 case when talking about law made in 1952?

                Serious question.

                1. You continue to ig nore the actual law and what happened in 1952, Ned.

                  Your version of “controlling law” that predates a change in the law cannot – by definition – be controlling law.

                2. anon, you have yet to cite any Supreme Court opinion that has held that Morse has been overturned.

                  Go look if you do not believe me.

                  Faulkner v. Gibbs is controlling law.

                3. Faulkner cannot be controlling law on a section of law written by Congress after the Faulkner case was decided under the previous law.

                  I need no Supreme Court citation for that.

                  You continue to choose to ignore Congress.

                  Even Federcio unmistakenly pointed out that what you want was changed.

                  By Congress.

                  The only branch of the government sanctioned to write the statutory law that is patent law.

              2. 6.1.1.1.2.1.2

                then any element may be claimed functionally without violating Morse

                But we’re not talking about Morse. We’re talking about indefiniteness, and we’re looking more at Wabash and Halliburton. There’s no categorical allowance to claim old things by their function in Wabash, in fact most of the language is to the opposite. Halliburton is obviously not a good case for you either as it actually is directly on point here.

                It seems to me that you necessarily are making a jump which I don’t believe the law allows you to make – you say that simply because a functionality is not novel that all ways of achieving it are the same vis-a-vis what actually IS novel in the claim, and logically that isn’t always true.

                Suppose elements G H or I are all known to achieve a function F. If I say “As an example embodiment, I did AGCD. However, I’m sure the art knows other ways of achieving F besides G, so I claim AFCD” I necessarily am assuming that AHCD and AICD are equivalent in a relevant manner to AGCD when I have demonstrated no proof of that, nor even proof that I posited AHCD and AICD.

                Isn’t the correct rule in such a case to force the applicant to claim AGCD and later argue in court with respect to an infringer that their AHCD and AICD infringing embodiments are equivalent? Why would the law allow the patentee to assume, without further proof, the very thing at the prosecution stage that he should have the burden to prove at the infringement stage? If you allow the patentee to say that all embodiments which cause the function are equivalent without further testing it, the patentee is always going to grab the functional result, and multiple non-novel elements in functional terms balloons the possible embodiments exponentially beyond what the applicant has actually considered.

                1. Random, you have not considered Faulkner that clarified and limited Halliburton. If the novelty is in the combination, there is no prohibition on functionally claiming of the elements.

                2. If the novelty is in the combination, there is no prohibition on functionally claiming of the elements.

                  That was not the holding of Faulkner. The Supreme Court was not asked to pass on the language in the Gibbs patent, it was simply asked if Halliburton controlled. But we knew from Wabash that functional language MAY be acceptable in extremely limited situations. The fact that it CAN be accepted does not mean that it should be or even is most of the time.

                3. “The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”

                  Faulkner at 267-268.

                  link to scholar.google.com

              3. 6.1.1.1.2.1.3

                The details of how to implement a compliance means does not appear to be the invention. What the compliance means does in relation to the other elements of the claim looks to be what is claimed to be new.

                Because nobody predicted that some “new” data could be tested for “compliance”?

                Now we are not only of the reservation but floating into deep space.

                the claim subject matter has the odor of 101

                Ya think?

              4. 6.1.1.1.2.1.4

                No doubt F. v. G. does not control 112(f). But, so what?

                The point of the case is that Morse/Halliburton does not apply to “new” combinations.

                1. To respond to your other comment:

                  We there held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”

                  I dunno why you’re quoting exactly what supports me. They said that Halliburton was a case about the precise point of novelty, and this is a case that was sustained because of combination. Therefore Halliburton doesn’t control. They did not say that they sustained the language of Gibbs. They did not review the language. They were asked if Halliburton controls, it does not.

                  Take the opposite of the first sentence and just ask yourself if that could possibly be the law: We there held that language that is not at the point of novelty renders the patent valid regardless of how broad it is. Does that seem like it could be the law to you? Does 112b apply only to the novelty of the invention or the entire invention? If you disagree (as I do) that a patent is valid regardless of the breadth of the language that isn’t at the point of novelty, then you cannot categorically make the statement that functional claiming of old things is allowable, because functionally claiming an element effects the breadth of it.

                  The point of the case is that Morse/Halliburton does not apply to “new” combinations.

                  The fact that something does not control does not mean it does not apply. Functionally claiming a novelty is per se invalidity. Functionally claiming a non-novelty is not per se invalidity. But it does not follow that functionally claiming a non-novelty is per se valid, it just means there is no black and white rule on the issue, which means we apply standard patenting logic. Halliburton and Wabash (and to the extent you want to, Morse) logic, though not controlling, applies just as well here. You ask yourself if the scope generated could (as the test is currently formulated) cause reasonable certainty about the structure of the element. You know it isn’t reasonable IN MOST CASES for all the reasons articulated in Halliburton, Wabash and Morse. Obviously the patentee knew of a method of achieving the function (the particular enabling acts he did to achieve the combination). So we ask what is the reasonableness for not conveying it? The answer is, in most cases, the same answer that is unacceptable in the context of the novel element – the applicant is wishing to expand his scope by being vague. When is it reasonable to not convey it? When the actions being taken do not admit themselves of step disclosure, and as Wabash said, we can question whether that ever occurs, or when the conveyance would not be helpful to one of skill in the art.

                  Functional language that is used to describe known acts that explain how things interact with particularity are acceptable. You can explain the interaction between a bat and a ball that causes a home run to occur by using functional language like “the pitcher throws the ball, the batter swings the bat, the bat contacts the ball, launching it over a wall 300 feet away.” You cannot explain the combination by saying “A system comprising a bat and a ball such that the bat interacts with the ball to cause a home run” even though that is nominally functional language in a combination. Why? For precisely the reason that that is only the inventor’s posited method of forming a home run, and it ignores the fact that a later inventor comes along and says “A system comprising a bat and a ball such that the ball is hit and remains in the park and the batter touches all four based before being tagged out.” The latter invention is not equivalent to the former and you cannot craft a scope of the former invention such that the latter one cannot take free and clear of it.

                  It simply does not follow that because Halliburton doesn’t control that functional claiming is “okay.” Wabash makes clear, and it has always been the law, that claiming what something does rather than how it does it is almost always per se invalid. At times we can reduce the system (single means, or point of novelty) to where we can say that it IS per se invalid. But when we cannot reduce the system the Wabash language still applies. Reasonable certainty only makes the situation more clearly against functional language, because reasonableness is a two-tailed test that asks why you can’t do more. I suppose if you had a combination where you literally could not express in words what is happening when two things interact then you would have per se allowance of functional claiming in a combination. Otherwise, you have to describe what is describable until the art would find no distinction in further disclosure.

                2. Well, Random, I will go this far: Even in a combination, if the applicant tries to distinguish the prior art based on the novelty of a function of one element, then the novelty is not in the combination, but in the functionally claimed element.

                  To me, the Faulkner recognizes that one can claim a machine by describing its parts and how they operate together. If the combination itself is new, and the parts and relationships are described in the specification, I really do not see any problem regarding claiming a result.

                  So I describe a part that is functionally claimed. It is new, but the details of the part are not the invention. It is what it does in relation to other parts that is the invention. This is like a method claim where the details of the apparatus itself are completely unimportant.

                  But if the combination is old such that the parts are known and their relationship to each other is known, and the only thing new is some detail in one part, Morse/Halliburton requires that the part not be claimed functionally lest the invention be claimed as result.

                3. You are doing that parsing thing again, Ned.

                  Eligibility is simply not done at the sub-claim level. You keep on wanting to misapply the “Point of Novelty” in a 101 sense.

                  Such is clear legal error.

                4. anon, the statute simply permits the use of MPF in combination claims. It save the validity of thousands of patents that used that claim format that would have potentially been invalidated by the holding of Halliburton. That is what was intended by Congress and that is what happened.

                  §112(f) was intended as a rescue – an optional way of claiming — just as you and I have both noted here in the past.

                  The holding in Halliburton was not limited the means-plus-function. §112(f), however, is limited means-plus-function. Thus if you do not choose to use §112(f), you potentially run into the prohibition of Halliburton.

                  But unfortunately in my opinion, the Federal Circuit has been interpreting functionally claimed elements under §112(f) regardless of the intent of the applicant. While I think this is bogus, effectively all functionally claimed elements of a combination claim are now “rescued” by 112(f).

                5. To me, the Faulkner recognizes that one can claim a machine by describing its parts and how they operate together.

                  I agree with this, but only because “how” implies a particular description as opposed to just “functional language” which allows for a result. Obviously in certain situations the distinguishing act is how two things interact, and therefore to the extent it’s “functional” to talk about how to do it, that’s fine. But what isn’t valid is to simply give two known elements and say that they interact to achieve a result. In between describing the particular actions and simply describing a result is a level of description which is the dividing line of indefiniteness.

                6. Random, “Obviously in certain situations the distinguishing act is how two things interact, and therefore to the extent it’s “functional” to talk about how to do it, that’s fine. But what isn’t valid is to simply give two known elements and say that they interact to achieve a result. In between describing the particular actions and simply describing a result is a level of description which is the dividing line of indefiniteness.”

                  Couldn’t agree more.

                7. Ned,

                  Your view on the use of terms sounding in function (outside of 112(f) and int he land of the Vast Middle Ground does not square with the law as written by Congress in 1952, what the congressional record speaks of what Congress did, what Federico speaks of what Congress did, what Prof. Crouch dedicated a thread to, and what case law (post 1952) speak of.

                  Your position is not supported in law.
                  Your position is not supported in history.
                  It is Ned-wanna-be law, a version that you so believe in that you misrepresent the state of actual law on a constant basis.

                  I really do “get” what you want the law to be. It just is not that way. Congress did not write it that way. You violate the principle that Judge O’Malley warns about – in the very reference you supplied a link to, and then turn a blind eye to that fact, that inconvenient fact, when I remind you of that fact.

                  Around and around and around you go.

      2. 6.1.2

        If the specification fails to disclose that structure, the problem is 112(a) problem, not necessarily a 112(b) problem. We don’t have to get into the two-step about means plus function.

        Well I agree that what 112f does is transmute a 112a enablement/wd problem into a 112b indefiniteness rejection. But apparently we do have to get into the means-plus question, because the Fed Cir is interested in making an issue of when something invokes means-plus or not, and it’s not like its irrelevant precedent.

    2. 6.2

      Algorithms are the name of the game in software, not functional results

      Let everyone know when the rules of this game make any sense. It’s nice that the game has a “name”, however, and doubly nice to see it recognized as such.

      For instance, if there was a picture in the specification labeled “complicance mechanism” with a picture of a flowchart showing “data input” leading to “compare data input to table of rules”, and a bifurcation into two bins “rules satisfied -> compliance” and “rules unsatisfied ->no compliance”, is that sufficient fake “structure” according to the “game”? Or do I have to provide a “specific” example of such a rule (e.g., “check database of copyrighted data to confirm if data is copyrighted”) to provide sufficiently fake “structure”? When and why does the application of abstract logic to data turn into sufficient fake “structure” to meet the requirements for a patent?

      As far as I can tell the PTO’s answer (and the Federal Circuit’s) answer is “we’ll bend over as far as we can without thinking about any of these questions”.

      1. 6.2.1

        As far as I can tell the PTO’s answer (and the Federal Circuit’s) answer is “we’ll bend over as far as we can without thinking about any of these questions”.

        Oh don’t be like anon. The fact that they have given an answer you don’t like doesn’t mean they haven’t given an answer. The answer is that it is extremely context specific – something has “enough” disclosure when one of skill “can visualize” what you are doing, see Aristocrat.

        For example, in one context to describe the shape of a particular building you might need to give cross-streets to define the building you’re talking about, in another context it might be directions from a known place, in another context you can simply say “It’s next to that italian restaurant.” In a fourth context, perhaps simply saying the city or the country where it is located is sufficient to call forth the idea. (What’s the structure in front of the most famous museum in Paris shaped like?) Those are all vastly different levels of detail in the disclosure, but they’re all still sufficient so long as they call forth a particular structure in the PHOSITAs mind. If your audience can tell where you mean with the words you use, you’ve done enough. If they can’t, you haven’t.

        Where is a safe guidepost? A means-plus scope is limited to its structure plus its equivalents. Once one can demonstrate that the disclosure would allow for two embodiments which are not equivalents of each other, the claim is certainly indefinite. Non-equivalence is sufficient but not necessary for indefiniteness.

        1. 6.2.1.1

          Breadth is not indefiniteness.

          Once again, your ability to deal with the ladders of abstraction (or rather, your lack thereof), appears to be your limiting factor.

          1. 6.2.1.1.1

            Take for example, chem patents that feature a range.

            Clearly, a range is more than one single “objective physical structure.”

            Are you saying that ALL patents that feature a range are indefinite?

          2. 6.2.1.1.2

            Breadth still violates 112(b) if the claim does not particularly point out. Clearly and distinctly is not the same thing. The functional claiming points made by the Supreme Court are not about whether one can determine what infringes or not, but whether the inventor particularly claimed his invention.

            1. 6.2.1.1.2.1

              I did not say “unlimited breadth,” Ned.

              I do not see any point in your comment.

              Can you try again?

              1. 6.2.1.1.2.1.1

                Let me provide the start of a hypothetical.

                Whichnic is recognized in the art as covering “A.”

                Whatnic is known in the art for covering “B.”

                Applicant invents Wantnic, which covers the (for this hypo) the patent-valid items of Whichnic+[old aspect EPN] OR Whatnic+[old aspect EPN] OR both.

                The breadth of claim: Wantnic comprising Which+ (for short) or What+ or both is the breadth under consideration.

                Discuss.

          3. 6.2.1.1.3

            Breadth is not indefiniteness.

            You fail to see why the 112b in view of f, or in the alternative 101 argument is such a good argument here anon. Breadth may not be indefiniteness, but breadth is most definitely preemption. The challenger here said “We don’t know whether he’s claiming one structure or many, but either way he’s not disclosing one structure.” If he claimed many structures he has a 101 problem, if he intended to claim a single structure, then he failed to particularly claim it, and a failure to particularly point out what the invention is IS indefiniteness.

            My statement of what constitutes a valid means-plus disclosure is directly taken from Aristocrat (a pre-Nautilus case, in case you want to swear off Nautilus like every other SC case) and is entirely consistent with the “reasonable certainty” standard of Nautilus. If the applicant’s intent was to claim a particular machine, he completely failed to disclose it here, and therefore we have a means-plus indefiniteness issue. If he intended to claim “anything that achieves these functions” then sure, breadth is not indefiniteness, but saying he claims anything which achieves a result is Morse.

            As I say elsewhere on this post – the same would be true if you made a 112a argument in place of the 101 argument – breadth may not be indefiniteness, but now the scope has expanded and he has to prove possession of the full scope, which he can’t do. You simply cannot get around the basic fact that there must be at least ONE fully described embodiment in order to have ANY valid claim, regardless of scope (or regardless of your ladders of abstraction).

              1. 6.2.1.1.3.1.1

                ALL claims preempt.

                All claims preempt a means of achievement. Some claims preempt a means of achievement and other means of achievement which may or may not have been considered by the inventor. The latter is unduly broad and runs into a host of 112 and 101 rejections based upon the particular situation.

                You simply cannot get around the fact that if there are in fact 100 different ways of doing something and the inventor finds 1 or 2 or 5, he’s still not entitled to claim the other 95, no matter how he crafts his scope. If his scope covers all 100 ways but he’s only proven he knows of 1-5, he loses. Now he might get away with it with respect to someone who is doing 1-5 because they may ALSO not recognize that 6-100 exist, or because dependent claims particularly limit themselves to 1-5, but once an infringer who is doing 37 or 52 comes in, it’s going to be extremely clear that the inventor only posited 1-5 and nothing more of the expanded scope. The overbroad scope will fall and the dependent claims won’t be infringed, and the person doing 37 will be allowed to continue doing 37 which is as it should be, because HE is the inventor of 37, not the guy who invented 1-5.

                So what separates 1 means from any of means 2-100 such that we can figure out if the infringer is doing 37 or if they’re doing some variation on 1-5? The court has also answered this – equivalence. If a PHOSITA would find two means of doing something to be qualitatively different (i.e. not substantially similar in element, method of operation or result) then they are different. Functional claiming only satisfies one of those tests by definition, it merely guarantees an equivalent result. Perhaps other limitations or context will satisfy the other limitations, but it won’t happen always.

                1. …as to the rest, well, you still need to grasp the ladders of abstraction and what actual equivalence means.

  2. 5

    Re: “.. aspects of the decision that make it stand out: ..the holding that the specification must disclose structure for all claimed functions,..”

    I have wondered why that fundamental 112 “enablement” requirement has not been applied more often to allegedly novel claim elements without having to also jump through hoops to find the claim element to be a “means plus function” claim element and then apply “ambiguity” rejections to the absence of disclosure instead?

    1. 5.2

      “Ambiguity” is one thing – even careful claim drafters can fail to see that a particular element could be interpreted multiple ways.

      But actual failure of enablement – like, “we can’t figure out how this inventions works” – should be rare. As long as PHOSITA can pick up the specification, read it, and use the disclosed invention without undue experimentation, it’s 112(b)-OK.

      “Enablement” under 112(b) is supposed to be reserved for truly incoherent applications filed by lunatics. Wasn’t there one for something like a “resurrection chamber” at one point?

      1. 5.2.1

        My favorite was the one for the power of God.

        Reminds me of some of those here that deign not to engage in actual inte11ectually honest dialogue.

      2. 5.2.2

        DS: “Enablement” under 112(b) is supposed to be reserved for truly incoherent applications filed by lunatics.

        Pretty sure the standard is a bit higher. “Undue experimentation” or something like that.

      3. 5.2.3

        I am not familiar with enablement under 112(b).

        But its unfortunate that you see enablement as a minor requirement. Enablement is critical to the whole “promote the progress of science and the useful arts” business.

        The 101 utility requirement should be the filter for lunatics.

    2. 5.3

      I am referring of course to this case and others in which there is no spec disclosure of any algorithm or any operative software for enabling allegedly novel claim elements.

    3. 5.4

      Because there is a mistaken belief that all programming is inherently enabled. In fact you’re entirely correct Paul – if this was outside 112f it would be a 112a violation, and it makes perfect sense to limit 112f to only the situation where the exact means-plus language is used, but the court apparently wants to maintain the equitable power it was using before 112f existed, so it fashions a rule to leave 112f at their discretion.

        1. 5.4.1.1

          Well according to you Halliburton was abrogated so that wouldn’t apply to your understanding of law

      1. 5.4.3

        I do not think this is an exercise of equity. I view this approach as a recourse to the canon of claim construction—which is a doctrine of law, not equity—to construe a claim to sustain validity where possible. That is, if you regard this claim as just a straightforward claim—i.e., not a 112(f)—then, as you say, this claim is clearly invalid for indefiniteness (what is a “compliance mechanism”?) and written description (how do I recognize one when I see it?) reasons.

        So, the court says to itself “‘mechanism’ is a recognized nonce word, so let’s see if we can’t save it by slotting it into 112(f).” In that case, the term “compliance mechanism” would be limited by operation of law to whatever actual structure the applicant had disclosed, so that one could know what this “compliance mechanism” is and how one can recognize it when one sees it. This might have worked for Media Rights too, if they had provided an expert to explain their disclosed code. As it happens however, they did not want to be limited to a particular algorithm, so instead they get nothing.

        1. 5.4.3.1

          Greg: canon of claim construction—which is a doctrine of law, not equity—to construe a claim to sustain validity where possible.

          I don’t think there’s much left of that nebulous “doctrine”, particularly after Nautilis.

          they did not want to be limited to a particular algorithm, so instead they get nothing.

          It’s rarely a positive for the patentee when the only specific embodiment disclosed in the specification has no value or is inoperative (or both — as was the case here).

        2. 5.4.3.2

          I do not think this is an exercise of equity. I view this approach as a recourse to the canon of claim construction—which is a doctrine of law, not equity—to construe a claim to sustain validity where possible

          One time I was ticketed for speeding. In court I mentioned that I was a lawyer, and the judge stopped me and said “Oh, so you were on your way to court then?” I said “No” and he responded with “I’m pretty sure you were on your way to court so that you had qualified immunity for the speeding, right?”

          The law is you do not import limitations from the specification into the claims, but that’s precisely what they are doing here – the Applicant could have claimed by saying means for, he chose not to. Because the resultant scope is clearly invalid, the court wants to “create” validity by importing limitations that the Applicant didn’t want in there. It might make this particular person non-infringing, but it saves the IP (at least as well as it was disclosed) for future infringers which gives effect to the quid-pro-quo of the disclosure.

          That’s the only reason for having a weak means-plus invocation disclosure rule, because if it’s strong you are stuck with whatever the drafter said and that can only result in more invalidity holdings than a flexible rule. Here the applicant didn’t even provide a bare-bones disclosure, so even the attempted saving could not fix the issue.

          1. 5.4.3.2.1

            First, the “that’s the only reason” is pure malarky.

            Second, the invocation is NOT weak – express words of choice is a rather clear and STRONG manner of being unequivocal about which OPTION the applicant has chosen.

            You are trying WAY too hard to make this something that it is not.

    4. 5.5

      Paul, I think the court remains fundamentally afraid of directly addressing “functional” claims, and instead would prefer to convert the problem into an issue under 112(f).

      1. 5.5.1

        Ned,

        The reason why was discussed by Federico in the Act of 1952 – and exactly the point I made about that point.

        Congress (not Rich) opened wide the gates to use terms sounding in function when EVER a combination claim is used.

        They (again, not Rich) eliminated Point of Novelty (as you so often attempt to use that phrase). Congress (yet again, not Rich) opened up combination claims and only sought to eliminate the use of terms sounding in function when single means claims were attempted.

        That IS how it is – not because I say so, but I say so, because the fact is plainly there in history.

            1. 5.5.1.1.1.1

              i.e., when I say the words “kitchen table,” what comes to your mind?

              What structure?

              How much are you willing to bet that the structure in your mind does NOT match the structure in mine?

              (and for the software aficionados, the philosophical musings of MathS comes into play here and the equivalency of different ways of saying the same thing broadens the spacings of those ladder rungs – it does NOT make the ladder only have one or two rungs)

      2. 5.5.2

        And it is no coincidence that the “fear” of the judiciary is reflected in the fact (again one that you find inconvenient) that Stevens attempted far too much and lost his majority position in Bilksi and even his alliance of then 4 has slipped to a position of 3.

        I remind you that 3, the new 4, is still NOT 5 (even if we suborn the thought of the Judiciary writing statutory law).

        It remains your weakness, your Achilles heal, to want to depend on the Constitution, yet place TOO much faith and credit in one mere branch of the government over another. There is a very good reason why we as attorneys swear NOT to that one branch of whom we are officers of. I renew my invitation to you to think, THINK, long and hard on the discussion points I bring to you.

  3. 4

    the court considered the specification’s recitation of source code that Media Rights contended was sufficient. Since the court could not read the code outright, it needed to look to “expert witness testimony to determine what that source code discloses at an algorithmic level.” Slip Op. at 14. (Media Rights apparently conceded to this at oral argument.) The unrebutted expert testimony was that the code returned only various error messages.

    Seems like sanctions would be highly appropriate here. It would be reasonable, of course, to ask the question how much code or what type of code would need to be provided to be deemed adequately enabling when the claims are not limited to any particular operating system, or what happens when the provided code is enabling for only one operating system or is enabling for an operating system that has been superseded. But that sort of question assumes that there is some reasonable framework for evaluating software in the first instance and we are so far from that day that it isn’t even funny.

  4. 3

    CAFC: Notably, a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

    The key here is that, when read in context, “several different things” doesn’t refer to the ordinary situation where different species all fall within the scope of some generic term recited in the claim. Generic terminology is permitted in valid claims. Rather, “several different things” refers to the situation where there are competing constructions that affect either claim validity or infringement and it’s impossible to choose the “right” construction with greater than 50% confidence (invariably because of the lack of information provided by the applicant about the meaning of the term).

    As plainly awful as this claim is — and it’s incredibly awful — there are a lot of other claims out there just like it. As with many other examples of computer-implemented junk, the only contribution to the “art” here is this “compliance mechanism.”

    But everybody knows that there is no “mechanism” in any meaningful structural sense of the term. It’s a logical operation, performed by a computer. Someone determines rules for “complying”, the input data is compared to those rules, and voila! you either comply or you don’t. That’s not “inventing”. That’s b0ttom-feeding. And the PTO and the Federal Circuit have been letting that junk pass through the gates for years without blinking its eyes.

    The squeeze play is on. Gee, I wonder how this is going to turn out. Exactly when is a fake “structure” sufficiently “definite” to be deemed equivalent to objective physical structure? Eventually the Federal Circuit is going to be forced to look into the abyss and come up something that makes sense. I wish them luck but that isn’t going to help them.

  5. 2

    “Notably, a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.””

    Taken strictly at face value, this phrasing seems to violate the portion of the Supreme Court’s ruling noting that at least some degree of imprecision must often be tolerated due to the inherent limits of language. Technically, saying “different things” per se doesn’t necessarily speak to “how different” – or the degree of precision involved. Perhaps the qualifier “several” is meant to implicitly capture the notion that that there be some substantial “span” for the various competing meanings, though ostensibly it only speaks to the number of competing meanings rather than the degree to which they differ.

  6. 1

    I don’t even see how this is a 112p6 case. Means-plus-function requires the recitation of a function – and here, there isn’t one!

    “Compliance mechanism” is a completely empty term. Here’s everything the claim says about the “compliance mechanism”:

    …said compliance mechanism coupled to said client system…

    …controlling a data output pathway of said client system with said compliance mechanism…

    … a controlled data pathway monitored by said compliance mechanism…

    …a custom media device coupled to said compliance mechanism via said data output path, for selectively restricting output of said media content.

    There’s no recited functionality at all. It’s like saying: “A method of fixing a tire, comprising: using a fixing means, where the fixing means is connected to an inflating means, and the tire gets fixed when you use the fixing means.”

    This shouldn’t be a 112(f) case. This should be a straightforward 112(b) case: the term is not just indefinite – it is totally undefined.

    1. 1.1

      Indeed, Rodime v. Seagate would suggest that X means without more cannot be MPF because MPF requires a functional statement.

      What is the functional statement?

      1. 1.2.1

        What’s the difference?

        Deliberate choice of words so as to – or so as not to – invoke an optional claim format.

              1. 1.2.1.1.1.1.1

                Do you see the Vast Middle Ground?

                Between what and what? Between a joke of a term like “compliance mechanism” and a novel, non-obvious objective physical structure that might be deserving of a patent?

                I agree there is a “vast middle ground” there but pretty much nobody thinks that nonsense like “compliance mechanism” should make the difference between pure junk and a patent-worthy innovation.

                Of course, if you believe otherwise then most of us literate thoughtful people here have “innovation” flying out of our rear ends hundreds of times an hour. Oh but wait! — that would make us all potential clients for bottom feeding patent agents such as yourself. Now it all makes sense.

                1. in pieces…

                  1) You do realize that a totally “objective physical structure” is an optional claim format, eh?

                2. 3) I have no idea why you would think “b0tt0m feeding” fits me, my views of the law as written by Congress, or how my clients – potential and not potential are not extremely well served by someone as myself who truly understands innovation.

                3. What passes as “sense” to you is more than evident in your own “self-l0athing” h@t red of patents and patent attorneys, that the advise to you remains long standing on the table: get into a profession for which you can believe in the work product you produce.

                4. optional claim format

                  Ah, yes: “optional claim formats.” Deep, serious stuff that everyone is most concerned about.

                5. I have no idea why you would think “b0tt0m feeding” fits me,

                  You mean other than the fact that you habitually rush to defend the worst claims ever granted and the patentees who wield them? And that you habitually attack every attempt to make those claims more difficult to enforce at the same time you habitually cheerlead for the worst decisions that expand patent rights while pretending that you are just concerned about ‘patent quality”?

                  Yes, it’s a real mystery.

        1. 1.2.1.2

          I am slightly sympathetic to this response, but not in the context of the Media Rights case. Imagine that the CAFC had decided not to apply 112(f) here. The case would still have gone the same way. Considered simply as words—instead of as a 112(f) term—the phrase “compliance mechanism” is vacuous, so the claim would still fail for indefinite sets. Better to save the outrage for a situation where it really matters. This claim deserved to fail.

          1. 1.2.1.2.1

            Somehow, autocorrect changed “indefiniteness” to “indefinite sets.” My apologies for the confusion.

      2. 1.2.2

        Topce, so “screw mechanism” is means for screwing and not a screw?

        What about voltage source? Is that means plus function as well?

        Isn’t the question really whether the claimed element defines particular, known structure, and if not, whether the specification tells us what that structure is, and if not, do we not have a 112(a) problem, lack of written description support?

        112(f) is specific: means + function – structure in support. If the phrase defines known structure, like a screw, in support, how can it be 112(f). Consider the phrase Adjective + Nonce-word without any function being further defined. How is this MPF if the phrase is associated with specific structure in the spec?

        What is a baffle? Look at Philips. It is known structure, that is why it need not be limited to specific embodiments. Is this changed when I add “steel,” as in “steel baffle?” Is a steel baffle means plus function?

        “Compliance mechanism” has a written description problem under 112(a) because it does not invoke specific, known structure and the spec does not describe what it is.

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