Functional Language and A Definite Structure

The U.S. District Court for the Western District of Texas (District Court) construed certain claim terms in U.S. Patent Nos. 8,965,045 and 9,335,825 as having a means-plus-function format and finding the corresponding claims indefinite given the structure disclosed in the patent specifications. The U.S. Court of Appeals (COA), in WSOU Investments L.L.C. v. Google L.L.C., Nos. 2022-1063, 2022-1065 (Fed. Cir. Oct. 19, 2023) affirmed the District Court’s holding as to Patent No. 8,965,045 (“’045 patent”) and reversed as to Patent No. 9,335,825 (“’825 patent”).

The term “processor configured to” is recited in an independent claim of the ‘045 patent as follows,

….

a processor configured to move automatically a sub-set of pixels defining target captured image that corresponds to the first picture within a larger set of available pixels in a direction of an edge of the target captured image when a defined area of interest with the target captured image approaches the edge of the target capture image,

said processor configured to provide a pre-emptive user output when the sub-set of pixels approaches an edge of the set of available pixels, and the second picture corresponds to the larger set of available pixels

…

The term “at least one memory including computer program code, where the at least one memory and the computer program code are configured, with the at least one processor to cause the apparatus to” is recited in an independent claim of the ‘825 patent as follows,

…

at least one processor; and

at least one memory including computer program code, where the at least one memory and the computer program code are configured, with the at least one memory processor, to cause the apparatus to at least:

…

A means-plus-function claim analysis is a two step process. Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (citing Williamson,792 F.3d at 1349–51). The first step determines whether the term is drafted in a means-plus-function format. Id. This first step is meant to examine whether the term at issue connotes a sufficiently definite structure to a person of ordinary skill in the art. Id.

If it is determined that the term is drafted in a means-plus-function format, then step two determines what structure, if any, is disclosed in the specification corresponding to that term. The disclosed structure is subject to 35 U.S.C. § 112 ¶ 6 requirements. Id.

While evaluating the ‘045 patent, the COA noted that “there is no categorical rule regarding whether the term ‘processor’ connotes sufficient structure to avoid interpretation in means-plus-function format” and that “the term ‘processor’ is not a nonce word and, in some circumstances, the term would connote sufficient structure.”

The COA further noted that “the applicability of § 112 ¶ 6 depends on the specific context of the patent at issue” and that “each claim term must be construed on its own in light of the intrinsic and extrinsic evidence of record.”

Given this standard, the COA referenced portions of the ‘045 patent specification that cite “implementation of the processor can be in hardware alone … have certain aspects in software including firmware alone or can be a combination of hardware and software (including firmware),” and that “processor may be implemented using instructions that enable hardware functionality, for example, by using executable computer program instructions in a general-purpose computer or special-purpose processing unit that may be stored on a computer readable storage medium … to be executed by such a processing unit.”

In view of these portions of the specification, the COA held that the term “processor,” as used in the claims of the ‘054 patent, is “so generically and functionally described as to fail to convey a sufficiently definitive meaning as a name for a structure.” The COA did not address the defendant’s argument regarding the second step of the mean-plus-function analysis because it was not raised in a timely manner before the District Court.

While evaluating the ‘845 patent, the COA noted that for software related claim limitations, “we can look beyond the initial code … turn to the functional language to see if a person of ordinary skill would have understood the claim limitation as a whole to connote sufficiently definite structure.” Dyfan v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022). Moreover, claim limitations like “computer program code,” when combined with a description of what the code is intended to accomplish, may convey a definite structure to a person of ordinary skill in the art. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018).

The COA also noted that they were unaware of any cases in which the term “memory” was held as a nonce term devoid of sufficient structure to invoke § 112 ¶ 6.

Given this standard, the COA held that the combination of the broad structures of the recited “computer program code,” “memory,” and “processor” terms sufficiently informs a person of ordinary skill in the art as to a definite structure as well as to how these structures relate to one another.

In contrast to the ‘045 patent, the COA held that the specification of the ‘845 patent describes the “processor” as hardware that runs the computer program code. The COA referenced that portion of the ‘845 patent specification that cites that the term processor “should be understood to encompass not only computers having different architectures such as single/multi-processor architectures and sequential (Von Newmann)/parallel architectures but also specialized circuits such as field-programable gate arrays (FPGA), application specific circuits (ASIC), signal processing device s and other devices.”

Accordingly, the COA reversed the District Court, holding that the ‘845 patent claim is not in a mean-plus-format format.

Unlike the ‘845 patent, the COA does not seem to reference the functional limitations recited in the claim of the ‘045 patent that may define the requisite structure to a person of ordinary skill in the art. Specifically, the claim recites that the processor is configured to move automatically a sub-set of pixels defining target captured image that corresponds to the first picture, within a larger set of available pixels in a direction of an edge of the target captured image when a defined area of interest with the target captured image approaches the edge of the target capture image, and of providing a pre-emptive user output when the sub-set of pixels approaches an edge of the set of available pixels, and the second picture corresponds to the larger set of available pixels.

Also, it is worrisome to see how slight differences in the language used to describe a processor in a specification may determine whether or not a definite structure for that processor has been sufficiently defined to a person of ordinary skill in the art.