Bottom line: A claim with a means plus function limitation may invalidate the claim if the claim and the specification are not properly drafted. As such, it may be prudent to avoid language that implicates means plus function such as solely functional language and the operative trigger term “means.” Moreover, this case (Media Rights Technologies v. Capital One Financial Corporation (Fed. Cir. Sept. 4, 2015)) helps with the fight against patent trollish type behavior by potentially increasing the likelihood of invalidating vague patent claims.
Each claim in a patent must be definite. This requires that the language of the claim must clearly delineate what is covered by the claim and what is not. More particular, when the claim is read in light of the specification and the prosecution history, the claim must provide notice, with reasonable certainty, as to the scope of protection afforded under the claim. Otherwise, the claim is invalid for being indefinite.
However, in some circumstances, patent owners prefer that the claim language be vague so that the breadth of the claims may be construed to be broader than it really is during litigation, especially if the accused infringer probably cannot afford the litigation. Also, if the breadth of the claims is clear and definite, then this provides a clear path for competitors to design around the patent’s claims. Competitors can read through the claims and the prosecution history and know how it might be able to avoid infringement of the claim. If a claim is ambiguous on a critical element, the ability to create a design around to avoid infringement of the patent is more difficult.
As such, one of the goals for claim drafting is to use language that has broad implications but yet provides enough clarity to avoid invalidity of the claim.
Numerous publications have highlighted problems with patent trolls or entities otherwise known as non-practicing entities. They complain that patent trolls increase the cost of doing business, stifle innovation and contribute to a host of other detrimental effects on the economy and the patent system. One of the problems arising in lawsuits filed by non-practicing entities is that non-practicing entities have been accused of asserting vague claims with the hope of a quick settlement knowing that defendants would rather pay off the non-practicing entity instead of litigate the issue and expend attorney fees.
In my opinion, the problem is not with the existence of non-practicing entities, because universities could be characterized as a non-practicing entity but they are known to provide great value to the economy and the patent ecosystem. The problem may be more related to the types of patent-trollish behavior that the patent system may want to eliminate or discourage since these types of behavior encourage business resources.
The Media Rights Technologies v. Capital One Financial Corporation case is an opinion that helps defendants fight frivolous lawsuits or lawsuits with little merit.
The patent litigated in Media Rights Technologies was directed to preventing unauthorized recording via a “compliance mechanism.” All claims of the patent required the “compliance mechanism.”
The defendant argued that the “compliance mechanism” limitation was really a means plus function limitation in disguise. Although the “compliance mechanism” limitation did not use the operative trigger word “means,” the “compliance mechanism” language was not associated with any structure in the claim that could perform the claimed function and thus prevent it from being characterized as a means plus function limitation. As such, the District Court construed the limitation as a means plus function limitation.
A prior case Williamson v. Citrix lowered the presumption against construing a limitation as a means plus function limitation if the claim did not use the operative trigger term “means.” Prior to Williamson v. Citrix, the patent drafter was able to avoid a claim limitation from being inadvertently construed as a means plus function limitation. The rule used to be that using the term “means” would categorize a claim term as being a means plus function limitation. Conversely, not using the term “means” would provide a heavy presumption against construing a claim term as a means plus function limitation. Williamson v. Citrix lowered the presumption so that there is no longer a heavy presumption for or against construing a claim term as a means plus function limitation due to the presence or absence of the term “means.” With this said, in the Media Rights case, even though the claim did not use the operative trigger term “means,” the claim limitation was still construed as a means plus function claim, presumably against the intentions of the patent drafter.
The patent owner attempted to argue that the “compliance mechanism” phase should not be construed as a means plus function limitation based on a prior case, namely, Inventio. In Inventio, the court did not construe a “modernizing device” to be a means plus function limitation since the specification described how the modernizing device connects to and interacts with other components. In response, the Federal Circuit said that Inventio did describe the connection and interaction between the modernizing device and other components but more importantly it described how the modernizing device operated while the patent owner in the Media Rights case failed to do. Moreover, the Federal Circuit suggested that the holding of Inventio may not have the same weight since Williamson v. Citrix eliminated the heavy presumption for or against construing a limitation as a means plus function limitation based on the presence or absence of the operative trigger word “means.” Now that the Federal Circuit established that “compliance mechanism” was a means plus function limitation, the Federal Circuit reviewed the specification to determine whether the specification disclosed any structure associated with the functions recited in the claims for the compliance mechanism. The Federal Circuit found no structure and thus held that the claim was indefinite and invalid because there was no way to tell what “claimed” structure performed the claimed functions.
Media Rights Technologies illustrates the impact Williamson v. Citrix which eliminated the heavy presumption and the ability of the patent drafter to implicate or avoid implication of a claim limitation as being construed as a means plus function limitation. The court’s refusal to apply the prior Inventio case based on the change in the presumption of whether the claims is or is not a “means-plus-function” claim should caution future litigants against relying on pre-Williamson v Citrix cases finding no means-plus-function claim terms.
Means plus function limitations can give the false impression that the limitation is very broad. An example of a means plus function limitation is a means for traveling from point A to point B. This broad language appears to cover all forms of travel including but not limited to automobiles, planes, bicycles and motorcycles but also any other conceivable way of traveling from point A to point B.
However, by statute, this type of apparent broad claim limitation is limited to the structure disclosed in the patent which is associated with the functions recited in the claim and their equivalents for traveling from point A to point B. As such, if one wants to use a means plus function limitation, then the patent drafter has a heightened duty to inform the public what is and is not covered under the means plus function limitation. Also, if no structure is defined in the specification to perform the claimed function then the means plus function limitation is indefinite and the claim invalid for being indefinite. This is what happened in Media Rights Tehcnologies.
In order to properly draft a means plus function limitation, forethought is required. Each of the functions recited in the means plus function limitation must be identified and all the structure associated with that function must be linked to that function in the specification. Due the high level of detail required to properly write a means plus function limitation, it may be better to avoid such limitations if possible unless there is a specific need for a means-plus-function type limitation.
The holding in Media Rights Technologies favors defendants and not patent owners because it helps invalidate claims having broad functional language. The court’s decision is useful in the fight against patent trollish behavior by non-practicing entities since it invalidates claims that use vague language and is useful in invalidating claims that non-practicing entities may want to construe as being broader than they really are.
However, there may be a problem with removing the heavy presumption against construing the claim as a means-plus-function limitation when the claim limitation does not use the operative trigger term “means” as held in Williamson v. Citrix and applied in the instant case. The problem is that claim limitations can now be inadvertently or against the patent drafters intentions be characterized as a means plus function limitation. This is what happened in Media Rights Technologies.
One potential claim strategy would be to avoid a means-plus-function limitations unless there is a specific advantage to include them. If a means plus function limitation is included in an independent claim or dependent claim, then there may be advantages to adding another independent or dependent claim that attempts to avoid such limitation as being construed as means plus function limitation. However, doing so may adversely affect claim construction of claim set and requires some consideration.
Moreover, if a claim limitation is identified as possibly reciting only function or may be vague on its face, the drafter should consider adding dependent claims that define the vague term or add structure for performing the claimed function so that one need not rely upon the disclosure or the specification to save the claim from inadvertently being construed as a means plus function limitation.