The Battle of the Alamo occurred between February 23 and March 6, 1836. Here, 180 years later, during the anniversary of the Alamo, I found myself in the Eastern District of Texas at a Markman hearing – and it reminded me of that famous battle. To possibly refresh your memory, the Battle of the Alamo was a pivotal event in the Texas Revolution that inspired many Texans to join the Texan Army that ultimately ended the revolution.
So, you ask, what does the Alamo have to do with claim construction in a patent case? – potentially a great deal.
The last number of months, the Examiners at the U.S. Patent and Trademark Office (“USPTO”) and defendants in numerous litigation matters have been attempting to interpret claims terms as allegedly being means-plus-function (“MPF”) terms under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. 112, paragraph six. If a claim term is found to be an MPF term then the claim element is limited to the structure disclosed in the specification for performing the claim function, as well as their equivalents. Under such an interpretation, if there is not sufficient structure in the specification corresponding to the MPF limitation of the claim then the claim could be determined to be indefinite.
Historically, a claim limitation is presumed to be interpreted as an MPF when it explicitly uses the terms ”means” or ”step” and includes functional language. However, when a claim limitation does not use the terms “means” or “step” it would trigger the rebuttable presumption that MPF does not apply. The courts had held that without the “magic words” of “means” or “step,” there was a strong presumption that MPF did not apply. However, the Federal Circuit, in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), held that the presumption against application of being treated as an MPF was no longer “strong.”
After Williamson, the presumption that a certain term is an MPF term is based on whether one of ordinary skill in the art would understand the claim with the functional language, in the context of the entire specification, to denote sufficiently definite structure to perform the function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., No. 2014-1218, 2015 U.S. App. LEXIS 15767, at *10 (Fed. Cir. Sept. 4, 2015) (§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name for structure”).
During the Markman hearing this last week, we were arguing whether the claim term a “processor . . . for receiving” was an MPF term. As you can see, the words “means” or “step” are not used, but given the Williamson decision, there is no longer a strong presumption that this cannot be treated as an MPF term.
Back to the Alamo – here comes Texas.
Late last year, in Smartflash LLC v. Apple Inc., 77 F. Supp. 3d 535 (E.D. Tex. Dec. 4, 2014), the Eastern District of Texas held that an alleged infringer did not show that § 112, paragraph six should be invoked, and further noted that like the terms “detector” and “circuit,” the term “processor,” while it may not define a specific structure, describes a class of structures. The court thus found that “processor” was not a nonce word like “means,” “element,” or “device.” Id. at *7-10.
In a very recent Texas decision, the court elaborated on the term “processor” as not being an MPF term based on three reasons. First, the word “processor” denotes structure according to its dictionary definition. Second, the claim at issue recites the objectives and operations (i.e., the functionality) of the recited processor. And, third, one of ordinary skill in the art would understand the structural arrangements of the processor from the recited functionality of the processor. See SyncPoint Imaging, LLC v. Nintendo of Am. Inc., 2016 U.S. Dist. LEXIS 677, *53, *59-*60 (E.D. Tex., Marshall Div., Jan. 5, 2016).
Further, courts in the Eleventh Circuit have adopted the same reasoning to hold that “processor” is not an MPF term. See Wi-LAN USA, Inc. v. Alcatel-Lucent USA, Inc., Case No. 12-23568, 2013 U.S. Dist. LEXIS 128181, at *127-128 (S.D. Fla. Sept. 9, 2013) (holding that the term “processor” when read in the context of the other claim language conveys structural meaning); Palmtop Prods. v. LO-QPLC, 450 F. Supp. 2d 1344, 1368 (N.D. Ga. 2006) (holding the term “processor” connotes structure and is defined in the computer science field as “the part of a computer that does data processing” (citations omitted)).
Are the Texas courts – and possibly Florida and Georgia – starting a trend to further define and guide what constitutes an MPF claim? Time will tell.
Opinions and conclusions in this post are solely those of the author unless otherwise indicated. The information contained in this blog is general in nature and is not offered and cannot be considered as legal advice for any particular situation. Any federal tax advice provided in this communication is not intended or written by the author to be used, and cannot be used by the recipient, for the purpose of avoiding penalties which may be imposed on the recipient by the IRS. Please contact the author if you would like to receive written advice in a format which complies with IRS rules and may be relied upon to avoid penalties.
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