William Grecia v. Samsung Electronics (Fed. Cir. 2019)
In a non-precedential decision, the Federal Circuit has affirmed the district court’s holding that Grecia’s asserted claims invalid as indefinite. The claims include a means-plus-function limitation, but an example of the underlying mechanism was not disclosed in the specification.
In the years leading up to the Patent Act of 1952, several courts (including the U.S. Supreme Court) severely limited the ability of applicants to use functional claim limitations (rather than structural) in order to obtain broader patent protection. See, for example, Halliburton Co. v. Walker, 329 U.S. 1 (1946) (barring functional limitations at the point of novelty). Traditionally, patent attorneys had drafted these functional limits in “means-plus-function” language. In Halliburton, for instance, Walker’s invalidated claim required “means … for creating pressure waves of known frequency.”
The 1952 Act added 35 U.S.C. § 112 ¶ 6 (now 112(f)) that allows for functional claims in certain circumstances:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Section 112 ¶ 6. Although this provision left patentees in a much better position than under Halliburton, most patent drafters attempt to avoid having claims fall under its ambit — preferring instead to rely upon quasi-functional limits that include some amount of structure and some amount of function and that do not use the magical words “means for.” That approach is preferred because, under the statute true means-plus claims are construed narrowly — to cover only the “corresponding structure” that was actually described in the specification (“and equivalents thereof”). In addition, as this case reiterates, a means-plus claim will be deemed invalid as indefinite if the specification does not actually disclose a corresponding structure.
It used to be much easier for attorneys to slip through the eye of the needle — but in recent years the gap has tightened as the Federal Circuit ruled that “nonce words” should not be seen as structural. (Is the eye too small, or the camel too large?)
Here, the patent claims a “customization module” that the district and appellate court found to be equivalent to a “means for customization.” In Williamson v. Citrix, the Federal Circuit previously explained that “‘Module’ is a well-known nonce word that can operate as a substitute for ‘means.'”
After finding “customization module” to invoke 112 ¶ 6, the court then found that the specification did not provide any specific disclosure of how such a module would actually work. Grecia’s patent is focused on computer implemented technology. In that context, the court has repeatedly held that disclosure of the associated computer algorithm can be sufficient (and is often required). Here, however, the specification did not include such an algorithm:
[T]he specification fails to explain how such customization is performed. Instead, the specification only describes the results of customization. . . . We have held that describing “the results of the operation of an unspecified algorithm” is not sufficient to transform the disclosure of a general-purpose computer into the disclosure of sufficient structure to satisfy § 112, ¶ 6. Aristocrat Techs. Because the ’860 specification merely describes the results of customization without any algorithm for configuring the claimed module to obtain those results, we agree with the district court that the specification fails to disclose the “corresponding structure” required under § 112, ¶ 6, thus rendering claim 21 indefinite under § 112, ¶ 2.
Notes: The patent does discuss the “customization module” a few times and includes an image (below), but it is all very mushy.
The password module 204 prompts the user to enter a master password which provides access to the encrypted digital media. Subsequently, the customization module 206 allows the user to customize the user access panel of the encrypted digital media.
According to an embodiment of the present invention, the customization module 206 facilitates adding one or more of a banner, a logo, an image, an advertisement, a tag line, a header message and textual information to the user access panel of the encrypted digital media.
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In a prior unpublished decision, the Federal Circuit McDonald’s escaped liability on a divided infringement claim. Grecia v. McDonald’s Corp., 724 Fed. Appx. 942 (Fed. Cir. 2018). The case against Samsung focused on Claim 21. Claims 1-8 and 11-20 had been cancelled by the PTAB. Mastercard International Inc. v. Grecia, IPR2017-00791 (PTAB 2017).