Media Rights Technologies, Inc. v. Capital One Financial Corp.

Court of Appeals for the Federal Circuit
800 F.3d 1366 (2015)

ELI5:

Rule of Law:

A patent claim term that does not use the word 'means' but recites a function without disclosing a sufficiently definite corresponding structure in the specification is an invalid means-plus-function term. For computer-implemented functions, the specification must disclose a specific, operative algorithm for each claimed function to be considered sufficiently definite.

Facts:

Media Rights Technologies, Inc. ('Media Rights') owned U.S. Patent No. 7,316,033 for a 'Method of Controlling Recording of Media.'
The patent described a system to prevent unauthorized recording of electronic media via a 'compliance mechanism.'
The 'compliance mechanism' was described as performing several functions, including diverting a data pathway to prevent copying and monitoring that pathway.
The patent's specification referred to a 'copyright compliance mechanism' composed of potential components like coder/decoders, agent programs, and skins.
The specification also included a C++ source code snippet intended to perform the 'diverting' function.
An expert testified that the provided C++ code did not perform the diverting function and only returned various error messages.

Procedural Posture:

Media Rights Technologies, Inc. sued Capital One Financial Corporation in the U.S. District Court for the Eastern District of Virginia for patent infringement.
Capital One filed a motion for judgment on the pleadings, arguing the patent was invalid for indefiniteness under 35 U.S.C. § 112.
The district court considered the motion concurrently with a Markman hearing for claim construction.
The district court granted Capital One's motion, ruling that the terms 'compliance mechanism' and 'custom media device' were indefinite.
Because these terms appeared in every claim, the district court held all claims of the '033 Patent invalid and entered a final judgment for Capital One.
Media Rights, as the appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit.

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Issue:

Does a patent's failure to disclose a sufficient corresponding structure, such as a working algorithm, for all the claimed functions of a 'compliance mechanism' render the patent claims invalid for indefiniteness under 35 U.S.C. § 112?

Opinions:

Majority - O'Malley, Circuit Judge.

Yes, the patent's failure to disclose a sufficient corresponding structure for the 'compliance mechanism' renders the claims invalid for indefiniteness. The court first determined that 'compliance mechanism' is a means-plus-function term under 35 U.S.C. § 112, ¶ 6. Although the term does not use the word 'means,' the presumption against it being a means-plus-function term was overcome because the claim term fails to recite sufficiently definite structure and instead recites only function. The word 'mechanism' itself connotes no specific structure, and the modifier 'compliance' does not add any. The patent specification only describes the mechanism's functional connections and interactions, not its internal structure. Because the term performs computer-implemented functions, the specification must disclose a specific algorithm as the corresponding structure. The court found that the patent failed to disclose an operative algorithm for the 'diverting' functions, as the provided C++ code was shown to be non-functional. It also failed to disclose sufficient structure for the 'monitoring' function, as it vaguely referred to 'rules' without explaining what they were or how they were applied. Since the patentee must disclose adequate structure for all claimed functions and failed to do so, the term 'compliance mechanism' is indefinite, rendering all patent claims invalid.

Analysis:

This decision reinforces the Federal Circuit's application of the means-plus-function doctrine to terms that do not explicitly use the word 'means,' particularly following the Williamson v. Citrix decision. It serves as a stark warning to patent drafters that using generic, functional nonce words like 'mechanism,' 'module,' or 'device' without disclosing a corresponding, specific structure in the specification is a path to invalidity. For software patents, the case underscores that merely mentioning functional components or providing non-operative code is insufficient; a clear, working algorithm must be disclosed for each claimed function. This ruling increases the burden on patentees to describe the 'how' of their invention, not just the 'what,' thereby limiting the scope of purely functional claiming.

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