Latest Federal Court Cases, 03/08/21
Rain Computing, Inc. v. Samsung Electronics America, Inc., Appeal Nos. 2020-1646, -1656 (Fed. Cir. Mar. 2, 2021)
Our Case of the Week focuses on the issue of indefiniteness, and particularly, terms that are construed as being subject to 35 U.S.C. § 112 ¶ 6. Like in other recent cases, the terms at issue were multi-word coined terms used to describe features in computer systems. We recently provided a write-up of a similar case—see our write-up of the Federal Circuit’s February 12, 2021 decision in Synchronoss Techs., Inc. v. Dropbox, Inc. here. As in that case, the claim at issue here was found invalid as indefinite.
Because this area of law is complex, somewhat arcane, tinged with policy concerns and patentee strategies, and surfacing on a regular basis, we take this opportunity to provide a legal primer.
As a general rule, patentees would love to claim not only particular solutions to technical problems but also all possible ways of accomplishing those solutions. But the patent laws require they claim particular structures, and not merely, generically, any solution that accomplishes the same function. The latter is known as “functional claiming,” which is anathema to the requirements of U.S. patent law based on precedent dating to the 19th century. An exception is provided in 35 U.S.C. § 112(f), which allows a patentee to claim the means of accomplishing a particular function using purely functional language. But that statute comes with a strict requirement: the specification must identify the structures that perform the recited functions. The patent is deemed to claim not all structures that can perform the recited function, but only those structures that are specifically identified in the specification “and equivalents thereof.”
Historically, patentees used the term “means for” as a way of signaling that they were claiming under this special provision. Thus, such claim terms are known as “means-plus-function” claim terms. “Means for attaching,” or “attaching means,” for example, refers to any means (or structures) that accomplish the function of attaching. If a patent uses that term, the patent is limited to the means for attaching that are disclosed in the specification “and equivalents thereof.” Courts applied a presumption that if the word “means” was used in a claim, the term invoked § 112(f), and if the word “means” was not used, the term did not invoke § 112(f).
In time, patentees started to move away from using the traditional “means for” language in their claims, to avoid the strictures of § 112(f)—that the claim would be limited to the structures disclosed in the specification. As explained, patentees would much rather the claim term broadly cover all ways of performing the function, and not just those they conceived of and included in the specification. Thus, rather than use “means for” language, patentees started using “nonce” terms as a way of trying to receive broader protection to cover all ways of accomplishing a given. Accordingly, rather than claim “means for attaching,” patentees started using phrases like “attaching device” or “attaching element” or “attaching unit” or “attaching mechanism” or “attaching gizmo.” These “nonce” terms (see also “module,” “contraption,” “thing,” “structure,” “widget,” “thingamajig,” “doodad,” “whatchamacallit,” etc.) appear as a structure, but fail to identify a specific structure. Rather, they frequently are used to mask that the claim term at issue seeks to claim any means for accomplishing a function, rather than a specific, identifiable structure.
In Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), the en banc Federal Circuit addressed the use of nonce terms in patent claims and held that a term does not invoke functional claiming or § 112(f) if “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.” Otherwise, § 112(f) applies. For example, a “stove element,” a “heating element,” and a “chemical element” are all known structures in their relevant arts. However, a “display element” or an “attaching element” may not be. Under Williamson, the latter would likely be subject to § 112(f), and the claim would be limited in scope to the structures in the specification associated with the functions of “displaying” and “attaching.” If the specification does not disclose any identifiable structures associated with those functions, the claim is invalid as indefinite pursuant to § 112(b).
In Synchronoss, a case from less than a month ago, discussed above, a number of claim terms were found to invoke § 112(f), and were found to be indefinite: “user identifier module”; “user authenticator module”; “user login authenticator”; “user data flow controller”; and “transaction identifier module.”
In Rain, the patent claimed a “user identification module.” The district court found the term not to invoke § 112(f). The Federal Circuit reversed, holding that the term “has no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure.” The Court analogized it to “compliance mechanism,” another functional claim term that was found to invoke § 112(f), in Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366 (Fed. Cir. 2015).
Having concluded that the term was a means-plus-function term subject to § 112(f), the Court next proceeded to analyze the structures identified to perform the function of “user identification” in the specification. The Court invoked its line of cases holding that “[i]f the function is performed by a general-purpose computer or microprocessor, then the second step generally further requires that the specification disclose the algorithm that the computer performs to accomplish that function.” The Court held that there was no algorithm provided by the specification in relation to the function of “user identification.” Accordingly, the Court held the term to be indefinite pursuant to § 112(b).
A copy of the opinion can be found here.
ALSO THIS WEEK
Bayer Healthcare LLC v. Baxalta Inc., Appeal Nos. 2019-2418, 2020-1017 (Fed. Cir. Mar. 1, 2021)
In this appeal from a district court case regarding a medical process patent, the Federal Circuit Court discussed issues relating to claim scope, infringement, validity, damages, and willfulness. As to claim scope, the Court affirmed the district court’s claim constructions, noting that a court “need not always purge every shred of ambiguity” when construing a claim. As to infringement, the Court found that substantial evidence supported the jury’s verdict that Baxalta infringed Bayer’s patent. As to validity, the Court found that substantial evidence supported the jury’s verdict that the asserted claims were enabled. In reaching this conclusion, the Court noted that “the specification need not include a working example of every possible embodiment to enable the full scope of the claims.” As to damages, first, the Court found the jury’s reasonable royalty award was supported by admissible expert testimony. Second, the Court held “that the district court acted within its discretion in awarding” pre-verdict supplemental damages and that doing so did not violate Baxalta’s Seventh Amendment right to a jury trial. Finally, as to willfulness, the Court affirmed the district court’s judgment as a matter of law that Baxalta did not willfully infringe. In reaching this conclusion, the Court explained that Bayer did not present sufficient evidence to establish the requisite state of mind for a willfulness finding. The Court further explained that having “knowledge” of a patent is not evidence of “deliberate or intentional” infringement.
A copy of the opinion can be found here.
By Annie White
Lakshmi Arunachalam v. International Business Machines Corporation, Appeal No. 2020-1493 (Fed. Cir. Mar. 1, 2021)
In this case involving a pro se patent plaintiff/appellant, the Federal Circuit explored the courts’ broad inherent power to impose sanctions for wanton, vexatious, and oppressive litigation conduct. Under that inherent power, the Court affirmed a district court’s award of attorney fees for the defense of non-patent claims, and also sua sponte struck voluminous scandalous and irrelevant material from appellant’s briefing.
In addition to her patent infringement claim, the plaintiff, Dr. Lakshmi Arunachalam, had repeatedly asserted baseless RICO claims in multiple jurisdictions against defendant IBM, the district court judge assigned to her case, and others, and had otherwise forced appellees and the district court to expend resources responding to her “repetitive, frivolous, and often bizarre oppositions and motions.” These included multiple repeated motions to recuse the district court judge and the Chief Judge of the District of Delaware; contesting at length the dismissal of her patent claim after the PTAB had found the asserted claims unpatentable (a decision Dr. Arunachalam did not directly appeal) and the Federal Circuit had affirmed the dismissal; moving for leave to file a sur-reply to defendants’ sanctions motion and then failing to file a sur-reply when leave was granted; posing “interrogatories” to the attorneys of record and the district court judge in her opposition filing alleging their collusion in “brazenly devised schemes to evade the Government and the laws of the United States”; repeated willful failures to comply with the district court’s local rules and instructions; and other vexatious conduct. The Federal Circuit affirmed the award of appellees’ attorneys’ fees for defending against Dr. Arunachalam’s baseless RICO claims as an appropriate response to her conduct.
The Federal Circuit went on to exercise its own inherent sanctions power in striking voluminous material from Dr. Arunachalam’s appeal briefing as scandalous and irrelevant, including (inter alia) further allegations of collusion, fraud, libel, and treason against appellees’ attorneys and the judges of the district court, the Federal Circuit Court of Appeals, and the PTAB; calls for all such “Constitutional tortfeasors” to be investigated and arrested; as well as demonstrably false statements concerning prior findings on her patent’s validity. The Court found that “[e]ven according Dr. Arunachalam wider latitude in view of her pro se status, her baseless, outlandish, and irrelevant invective degrades the dignity and decorum of the court” and impeded the orderly disposition of her case. In view of the monetary sanctions already awarded, the Federal Circuit found that the lesser sanction of striking this material was appropriate.
A copy of the opinion can be found here.
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- Of Counsel