Claim Construction: Functional Limitations

Fed. Cir. on 112(f): "processor," "storage" are structure (posted 03/28/22)

Claim 1. An apparatus comprising:

a storage adapted to:

store one or more image frames; and

a processor adapted to:

obtain a first image. . . ;

expand the first image. . . .

In VDPP LLC v. Vizio, Inc., the Federal Circuit reversed a lower-court decision that claims including the terms, “processor” and “storage” were not means-plus-function terms and therefore not indefinite for failing to recite adequate structure in the written description. The court held: “We agree with VDPP that the district court erred in holding that the limitations “processor” and “storage” are subject to 112(f).” The court further stated:

“Although the court acknowledged that the presumption against § 112(f) applied, it then immediately concluded, without evidence, that Visio overcame the presumption. That was erroneous. To overcome this presumption, Visio was required to provide at least some evidence that a person of ordinary skill would not have understood the limitations to 'recite sufficiently definite structure[s].' The court pointed to no such evidence from Visio, instead summarily concluding that the limitations are subject to 112(f).”

Moreover, the district court overlooked intrinsic evidence showing that the terms 'processor' and 'storage' do connote structure to a skilled artisan. For example, the specifications explain that 'processors' and 'storage' are 'well-known.' In other words, contrary to the court's determination, a skilled artisan would not understand 'processors' and 'storage' to merely be 'black box[es] for performance of a function.'“

Incorporated matter cannot support 112(f), says Fed. Cir. (posted 07/30/20)

Last November, the Federal Circuit decided Fiber v. Ciena and related cases, holding, among other things, that the term, “control” was 112(f) term not sufficiently described in the specification to support definiteness under 112(b), despite incorporation by reference details as to the control element. Stated the court: “material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause” (internal quote and citations omitted). This was a unanimous opinion of a panel authored by Chief Judge Prost.

Fed. Cir. clarifies permissive functional language (11/10/17)

In Mastermine Software v. Microsoft Corp., the Fed. Cir. distinguished claims setting forth permissible functional language of software receiving user input from the impermissible functional language that sets forth user operations in IPXL Holdings LLC v. Amazon.com1) and the impermissible hybrid claim in Rembrandt Data Techs v. AOL 2). More specifically, the court stated that, “though claim 8 includes active verbs – presents, receives, and generates – these verbs represent permissible functional language used to describe the capabilities of the “reporting module.” [ . . . ] While these claims make reference to user selection, they do not explicitly claim the user's act of selection [as in IPXL Holdings], but rather, claim the system's capability to receive and respond to user selection.”

Fed. Cir. reverses PTAB on functional limitation (posted 01/10/17)

In In re Chudik, the Federal Circuit reversed a PTAB decision upholding an Examiner's rejection of a claim to a scalpal having a blade “configured for creating a passageway through skin and soft-tissue to a target site on a bone.” There was no dispute that prior art device met non-functional (i.e., structural) limitations in the claim. Stated the court:

“When . . . the only question [is] whether the functional limitation can be found in the single prior art reference, we apply the long-standing and unquestioned precedent as stated in In re Schreiber 3). . . . [W]hen the structural limitations are met by a single prior art reference, and when the examiner 'has reason to believe' that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference.

In this case, the examiner and the Board shifted the burden to the applicant . . . to disprove anticipation. [. . .] As explained below, in this case the examiner lacked adequate reason for his belief that Samuels inherently teaches the functional limitation, and the Board thus erred in sustaining the examiner's § 102 final office action.”

Fed. Cir. reverses PTAB on inended-use limitation (02/18/13)

<box right 50% blue> A method <hi>for verifying the accuracy of logical-to-physical mapping software designed for testing memory devices,</hi> said method comprising:

[a] providing a built-in self test (BIST) fail control function to generate multiple simulated memory fails at various predetermined locations within a memory array of a memory device;

[b] testing said memory array via a memory tester;

[c] generating a bit fail map by said logical-tophysical mapping software based on all memory fails indicated by said memory tester, wherein said bit fail map indicates physical locations of all fail memory locations derived by said logical-tophysical mapping software; and

[d] comparing said fail memory locations derived by said logical-to-physical mapping software to said various predetermined memory locations <hi>to verify the accuracy of said logical-to-physical mapping software.</hi>

In In re Jasinski, the Fed. Cir. reversed the PTAB finding that claims were anticipated by prior art. More specifically, judge Moore agreed with the applicant and reversed the PTO in finding that the highlighted limitations in claim 1 shown here were “a statement of intended use and does not limit the claims.” Judge Moore stated, “We agree with Mr. Jasinski. Not only does the “to verify/verifying” language refer to the “essence of the invention,” it also provides the criteria by which the previously-recited comparing limitation is analyzed. We thus conclude that the “to verify/verifying” language is limiting.

Fed. Cir. addresses functional language in software claims (11/06/11)

Example claim (disputed terms in italics):

12. A portable, keyboardless, computer comprising:

an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;

a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;

a processor coupled to said memory and said input/output device for executing said data collection application; and

an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said application generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries;

a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.

In Typhoon Touch Technologies v. Dell et al., Judge Newman addressed a claim setting forth, inter alia: ”a memory for storing at least on data collection application configured to determine contents and formats of said inquiries displayed on said screen”

The district court construed “a memory for storing . . .” as: “A memory that must perform the recited function” including storing the applications, etc. Plaintiff Typhoon argued that the claims should have been interpreted as an apparatus, not a method, and therefore the functional language is met if the memory of the accused product is capable of being configured to store data collection applications, even if the memory is not so configured. Citing Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,4) Typhoon suggests that it is irrelevant if the function is actually performed by the device, if the device can be programmed or configured to perform the function.

Microprocessor: The Fed. Cir. distinguished this case from Microprocessor, stating that Microprocessor held that a device must be capable of performing the recited function, not that it might later be modified to perform that function. The court then cited a number of cases, including Fantasy Sports Props v. 5), Telemac Cellular v. Topp Telecom 6), and High Tech Med. Instrumentation v. New Image Indust. 7), showing that infringement cannot be based on a finding that an accused product is capable of being modified to operate in an infringing manner. The court never explicitly states that the “memory for storing” set forth in the asserted claims must be modified to operate as claimed, but this is the clear implication based on the citation of case law and agreement with the District court that “the 'memory for storing' clause requires that the memory is actually programmed or configured to store the data collection application.”

Take-away: The court appears to hold that a computer memory is not just a device that can store any arbitrary data–a memory used for one thing is not the same as a memory used for another thing. According to the Fed. Cir., the act of storing data or an application in a memory turns the memory into something new and different. Therefore, anytime a memory is claimed as being “for” a particular purpose, that purpose must always be considered limiting.

Other holdings:

  • For a claim limitation, “a processor . . . for executing” the Fed. Cir. agreed with the district court that the recited function is limiting. This determination is primarily based on patentee's statements in the specification and during prosecution of the application.
  • For “operating in conjunction,” Typhoon argued that the clause does not limit the run-time generator to be configured and programmed to operate with the processor operating system, and the court improperly injected a “use”requirement into the claim. The Fed. Cir. agrees that the district court's interpretation is the only one consistent with the specification, which describes the invention as “an improved portable computer. . . which is specifically adapted for facilitated data collection . . .”
  • Typhoon argues that the term, “keyboardless” has a special definition by the specification to mean that the device does not require the use of a separate keyboard, but that the claims do not exclude devices in which a separate keyboard is present, whether integrated or not. The district court held that the claims exclude the presence of an integrated keyboard, although a separate keyboard may be “hooked up.” The Fed. Cir. agreed that the term, “keyboard” is used to include both a physical as well as “simulated” keyboard, and no support for Typhoon's interpretation.
  • The Fed. Cir. reversed the District Court's holding that the phrase, “means for cross-referencing” is indefinite since, citing Aristocrate Technologies Australia v. International Game Technology 8), the specification “does not contain an 'algorithm' adequate to provide structure for this function.” The Fed. Cir. agreed with Typhoon that the phrase is supported by the “structure, materials, or acts” in the specification, specifically that the specification states that cross-referencing entails the steps of data entry, then storage of data in memory, then the search in a library of responses, then the determination if a match exists, and then reporting action if a match is found.
430 F.3d 1377 (Fed. Cir. 2005)
641 F.3d 1331 (Fed. Cir. 2011)
128 F.3d 1473 (Fed. Cir. 1997)
520 F.3d 1367 (Fed. Cir. 2008)
287 F.3d 1108, 1117-18 (Fed. Cir. 2002)
247 F.3d 1316, 1330 (Fed. Cir. 2001)
49 F.3d 1551 1555-56 (Fed. Cir. 1995)
521 F.3d 1328, 1334 (Fed. Cir. 2008)

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