In Zeroclick, LLC v. Apple Inc., [2017-1267] (June 1, 2018) the Federal Circuit vacated and remanded the district court determination that claims of U.S. Patent Nos. 7,818,691 and 8,549,443 were invalid for indefiniteness, finding the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms.
At issue were the limitations “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” which the district court determined were means-plus-function limitations.
To determine whether § 112, para. 6 applies to a claim limitation, the presence or absence of the word “means” is important. The failure to use the word “means” creates a rebuttable presumption that § 112, ¶ 6 does not apply. However, this presumption
can be overcome, and § 112, ¶ 6 will apply, if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. The essential inquiry remains whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
The Federal Circuit noted that neither of the limitations at issue uses the word “means,” so presumptively, § 112, ¶ 6 does not apply to the limitations. The Federal Circuit noted that while Apple argued that the limitations must be construed under § 112, ¶ 6, it provided no evidentiary support for that position, and thus the presumption against
the application of § 112, ¶ 6 to the disputed limitations remained unrebutted. The Federal Circuit found that the district court’s discussion was couched in conclusory language, relying on Apple’s arguments, contrasting them against Zeroclick’s contentions, but pointing to no record evidence that supports its ultimate conclusion that § 112, ¶ 6 applies to the asserted claims.
The Federal Circuit said that the district court legally erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6. The Federal Circuit noted that this was erroneous for at least three reasons: (1) the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions; (2) the court’s analysis removed the terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms; and (3) the district court made no pertinent finding that compels the conclusion that a conventional graphical user interface program or code is used in
common parlance as substitute for “means.” The Federal Circuit concluded that the district court thus erred by effectively treating “program” and “user interface code” as nonce words and concluding in turn that the claims recited §means-plus-function limitations.