Precedential Patent Cases From the Federal Circuit in the Past Week
Media Rights – The panel first cites the en banc Williamson v. Citrix case for the proposition that a claim limitation that does not use "means" will trigger a rebuttable (but no longer a "strong") presumption that § 112 (f) does not apply. The panel concludes that the term "compliance mechanism," which is a limitation in every claim, is a means-plus-function term because the claim does not recite sufficient structure. Patents covering computer-implemented functions must disclose an algorithm for performing those functions. Here, the specification fails to disclose an algorithm for both the "controlling data output" and the "managing output path" functions of the compliance mechanism so the district court did not err when it determined that these terms and thus all of the claims are indefinite.
Dynamic Drinkware – The Circuit affirms a ruling by the Patent Trial and Appeals Board in an inter partes reviewthat the petitioner did not demonstrate that an alleged prior art patent was entitled to the filing date of its provisional patent application. The panel rejected the petitioner's argument that as an issued patent, the prior art Raymond patent was entitled to the filing date of its provisional patent application and the burden should have been on the IPR respondent/patentee to prove that its reduction to practice date was prior to Raymond's provisional filing date.
Media Rights Technologies, Inc. v. Capital One Fin. Corp.,Fed. Cir. Case 2014-1218
(September 4, 2015)
Media Rights filed suit against Capital One, alleging infringement of a patent directed to methods, systems, and computer readable media related to the prevention of unauthorized recording of electronic media. Specifically, the '033 prevents unauthorized recording via a compliance mechanism, which diverts incoming media content protected by law or agreement from being output from a system in order to stop the illegal copying or sharing of that content.
Claim 1 is illustrative and recites:
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.
On the same day Capital One filed its opening claim construction brief, it also filed a motion for judgment on the pleadings that the patent was invalid under 35 U.S.C. §§ 101 and 112(b). The district court concluded that (1) the terms "compliance mechanism" and "custom media device" are indefinite and, (2) therefore all of the claims are invalid. The district court declined to reach Capital One's § 101 argument.
"Compliance Mechanism" is Means-Plus-Function Clause to be Construed Under § 112 (f)
Under Williamson v. Citrix Online, LLC, 2015 U.S. App. LEXIS 10082 (Fed. Cir. June 16, 2015), "a claim term that does not use 'means' will trigger the rebuttable [but not ‘strong'] presumption that § 112 (f) does not apply." But this presumption can be overcome if a party can demonstrate that the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function. In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6." Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014).
The parties agree that the claim language recites functions for the "compliance mechanism" term, but the parties dispute whether the claims, read in light of the specification, only "recite function without reciting sufficient structure for performing that function.
Media Rights does not dispute that "compliance mechanism" has no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure. To prevent the application of § 112, ¶ 6, Media Rights analogizes the "compliance mechanism" term to the "modernizing device" term described in Inventio AG v Thyssen Krup Elevator Ams., 649 F.3d 1350 (Fed. Cir. 2011), which we held was not a means-plus-function term based on extensive structural description in the specification. In Inventio, we found that the term "modernizing device" was used to describe an electrical circuit, which we found connotes sufficient structure when coupled with a detailed description of the circuit's operation. Because "the claims indicated that 'modernizing device' functions as an electrical circuit that receives signals, processes signals, and outputs signals to other components" and the specification "depicted the modernizing device and its internal components," "showed how the elements were connected together," and further described how these components perform the claimed functions, we concluded that "modernizing device" was not a means-plus-function limitation.
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. 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." None of these passages, however, defines "compliance mechanism" in specific structural terms. Without more, we cannot find that the claims, when read in light of the specification, provide sufficient structure for the "compliance mechanism" term.
We have never found that the term "mechanism"— without more—connotes an identifiable structure; certainly, merely adding the modifier "compliance" to that term would not do so either. Nothing in the written description of the patent adds sufficiently to the meaning of the term's structure; it only describes the term's function and interaction with other parts in the system. This disclosure fails to provide sufficient structure for "compliance mechanism," so, we find that the district court was correct to conclude "compliance mechanism" is a means-plus-function limitation.
The Specification is not Sufficient to Support Either the Diversion or Monitoring Functions
Because "compliance mechanism" is a means-plus-function term, we now must "attempt to construe the disputed claim term by identifying the 'corresponding structure, material, or acts described in the specification' to which the claim term will be limited." Here, the parties agree that the "compliance mechanism" performs four functions: controlling data output by diverting a data pathway; monitoring the controlled data pathway; managing an output path by diverting a data pathway; and stopping the play of media content. But the specification fails to disclose an operative algorithm for both the "controlling data output" and "managing output path" functions. To determine if this disclosure of software code is sufficient, the court needs expert witness testimony to determine what that source code discloses at an algorithmic level. Here, there is unrebutted expert testimony that this code only returns various error messages. The cited algorithm does not explain how to perform the diverting function, making the disclosure inadequate. Additionally, the specification does not disclose sufficient structure for the "monitoring" function. Therefore, because the specification fails to disclose any other algorithm that performs the diversion or monitoring functions, the specification fails to disclose sufficient structure for the "compliance mechanism" term, and the claims are indefinite.
Comment: This case is a good example of what we thought was likely to happen post- Williamson. If a claim includes adequate structure to avoid § 112 (f), the claim is likely to be fairly narrow. If it does not include such structure, it will be interpreted as means-plus-function and might well be determined to be indefinite. Previously, given the "strong" presumption opposed to means-plus-function construction where "means" language is not used, relatively little structural language was necessary to avoid § 112 (f) construction.
Dynamic Drinkware, LLC v. National Graphics, Inc., Fed. Cir. Case 2015-1214
(September 4, 2015)
Dynamic appeals from the decision of the PTAB in an inter partes review not to reject claims 1 and 12 of a National Graphics '196 patent directed to making plastic articles bearing an image formed by combining images to have a 3-D effect. The '196 patent issued on October 21, 2003, from an application filed on November 22, 2000. The '196 patent claims the benefit of U.S. Provisional Application 60/211,112, filed on June 12, 2000. Dynamic petitioned for inter partes review, arguing that claims 1, 8, 12, and 14 were anticipated by a patent to Raymond. The application for Raymond was filed on May 5, 2000, claiming the benefit of a provisional application filed on February 15, 2000. The Board granted the petition as to claims 1 and 12, but concluded that Dynamic failed to prove by a preponderance of the evidence that claims 1 and 12 were anticipated under § 102(e)(2) by Raymond.
For a patent to claim priority from the filing date of its provisional application, it must satisfy 35 U.S.C. § 119(e)(1) (2006), which provides that:
An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this
title . . . .
In other words, the specification of the provisional must contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application."
The Board Properly Required that Dynamic Prove an Early Effective Prior Art Filing Date
Dynamic argues that the Board erred in shifting the burden to Dynamic to prove that the Raymond patent was entitled to the filing date of its provisional application. According to Dynamic, as a presumptively valid prior art patent, Raymond's presumed effective date is its February 15, 2000 provisional application filing date. Dynamic contends that it made a prima facie showing that Raymond was thus prior art to the '196 patent under § 102(e) as of its provisional date, and the burden should have shifted to National Graphics to prove that Raymond was not entitled to the filing date of its provisional application.
We hold that the Board did not err in placing the burden on Dynamic, the petitioner in the inter partes review, to prove that the prior art Raymond patent was entitled to the filing date of its provisional application. As an initial matter, and to clarify the relative burdens, we begin with the established concept that there are two distinct burdens of proof: a burden of persuasion and a burden of production. The burden of persuasion "is the ultimate burden assigned to a party who must prove something to a specified degree of certainty," such as by a preponderance of the evidence or by clear and convincing evidence. In an inter partes review, the burden of persuasion is on the petitioner to prove "unpatentability by a preponderance of the evidence," 35 U.S.C. § 316(e), and that burden never shifts to the patentee. Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.
A second and distinct burden, the burden of production, or the burden of going forward with evidence, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. The burden of production may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record.
The aforementioned shifting burdens and related priority claims under § 120 in district court litigation parallel the shifting burdens and related priority claims under § 119(e)(1) in inter partes reviews. Although, issued patents are entitled to the presumption of validity under 35 U.S.C. § 282, the different evidentiary standard in an inter partes review does not alter the shifting burdens between the parties because § 316(e) also places the burden of persuasion on the petitioner to prove unpatentability. Compare § 282 ("The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity."), with § 316(e) ("In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.").
In this case, Dynamic, as the petitioner, had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted. Dynamic also had the initial burden of production, and it satisfied that burden by arguing that Raymond anticipated the asserted claims of the '196 patent under § 102 (e)(2).
The burden of production then shifted to National Graphics to argue or produce evidence that either Raymond does not actually anticipate, or, as was argued in this case, that Raymond is not prior art because the asserted claims in the '196 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to the filing date of Raymond. National Graphics produced evidence that the invention claimed in the '196 patent was reduced to practice prior to the filing date of Raymond, and thus contended that the asserted claims were entitled to a date of invention prior to that of the Raymond patent.
As a result, the burden of production returned to Dynamic to prove that either the invention was not actually reduced to practice as argued, or that the Raymond prior art was entitled to the benefit of a filing date prior to the date of National Graphics' reduction to practice. As the Board found, however, Dynamic failed to carry its burden of proving that Raymond's effective date was earlier than the date that the invention claimed in the '196 patent was reduced to practice. The burden of production was on Dynamic to prove that, under § 119(e)(1), Raymond was entitled to the benefit of the filing date of its provisional application, and it failed to do that.
The Board's decision was supported by substantial evidence because Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. As Dynamic acknowledges, it provided charts to the Board comparing the claims of the '196 patent to the disclosure of the Raymond patent and claim 1 of the '196 patent to the disclosure of the Raymond provisional application. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic's burden. A provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.
Comments: The Circuit continues its practice of affirming AIA reviews, the only reversal being the Microsoft v. Proxycon rejection of a too-broad BRI claim construction. But, unlike most such affirmances, this one supports patent validity. The litigation will presumably proceed, and Dynamic will be precluded from presenting validity issues it raised or could have raised in the IPR.