Media Rights Techs. v. Capital One Financial Corp.

Addressing whether a claim term was a means-plus-function term under the pre-America Invents Act (AIA) 35 U.S.C. § 112 ¶ 6, the U.S. Court of Appeals for the Federal Circuit construed the disputed term as a means-plus-function term despite the absence of the word “means” and found the claims invalid because the specification failed to adequately disclose the structure to perform all of the claimed functions. Media Rights Techs. v. Capital One Financial Corp., Case Nos. 14-1218 (Fed. Cir., Sept. 4, 2015) (O’Malley, J.).

Media Rights Technologies brought an infringement suit against Capital One based on a patent directed to preventing unauthorized recording of electronic media. At the claim construction stage, Capital One filed a motion for judgment on the pleadings, arguing that all of the claims were invalid for indefiniteness because, inter alia, they contained a means-plus-function term that was not supported by the specification. Media Rights argued that the disputed term was not a means-plus-function term and that the specification adequately disclosed a sufficiently definite structure. The district court granted Capital One’s motion, and because the disputed term appeared in every claim of the patent-in-suit, the district court found all of the claims to be invalid. Media Rights appealed.

On appeal, the Federal Circuit agreed that the term “compliance mechanism” was indefinite. As to whether the term should be evaluated as a means-plus-function element, the Court agreed with Media Rights that the district court incorrectly limited its analysis to just the claims. The Court also agreed with Media Rights that a term need not have a plain and ordinary meaning in order to avoid means-plus-function treatment. Nevertheless, upon its own review of both the claims and specification, the Court ruled that the district court properly concluded that the term “compliance mechanism” was a means-plus-function term. The Court distinguished a prior holding where a term that lacked a common meaning was found to define a particular electrical circuit and thus did not invoke means-plus-function claim drafting. The Court also noted that the prior holding predated its recent en banc decision abolishing the heavy presumption against construing terms lacking the word “means” as means-plus-function elements. See Williamson v. Citrix Online (IP Update, Vol. 18, No. 6).

Turning to whether the specification recited sufficient corresponding structure, the Federal Circuit concluded that the “compliance mechanism” performed computer functions that required the disclosure of an algorithm; they could not be supported by the mere disclosure of a general-purpose computer. Here, the Court found that the specification failed to disclose any operative algorithm for all of the recited functions. As to two of the functions, the Court accepted apparently unrebutted expert testimony that certain source code included in the specification merely resulted in error messages and thus did not disclose a corresponding algorithm. As to a third function, Media Rights relied on a specification passage mentioning a set of rules to be used, but the Court disagreed noting that the specification did not provide any detail about what those rules actually were. The Federal Circuit thus found the term indefinite for being a means-plus-function element that lacked sufficiently corresponding structure.