Friday, June 01, 2018

CAFC vacates ND Cal decision in Zeroclick matter

Appellant Zeroclick won at the CAFC:

Zeroclick, LLC sued Apple Inc. in the U.S. District
Court for the Northern District of California, asserting
claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19
of U.S. Patent No. 8,549,443. The district court found the
asserted claims invalid for indefiniteness, reasoning that
the claims recited means-plus-function terms for which
the specifications do not disclose sufficient structure.
Because the district court failed to undertake the relevant
inquiry and make related factual findings to support its
conclusion that the asserted claims recited means-plusfunction
terms, we vacate and remand.

As to 112/6

“To determine whether § 112, para. 6 applies to a
claim limitation, our precedent has long recognized the
importance of the presence or absence of the word
‘means.’” Williamson, 792 F.3d at 1348. The failure to
use the word “means” creates a rebuttable presumption
that § 112, ¶ 6 does not apply. Id. But the 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.” Id. (emphasis added) (internal quotation
marks, brackets, and citation omitted); see also Advanced
Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
1347 (Fed. Cir. 2016) (“In determining whether this
presumption has been rebutted, the challenger must
establish by a preponderance of the evidence that the
claims are to be governed by § 112, ¶ 6.”); Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996) (noting that the district court relied on evidence
extrinsic to the patent in reaching its conclusion that a
term invoked means-plus-function treatment).

When evaluating whether a claim limitation invokes
§ 112, ¶ 6, 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.” Williamson, 792 F.3d at 1348;
Greenberg, 91 F.3d at 1583 (“What is important is . . . that
the term, as the name for structure, has a reasonably well
understood meaning in the art.”). That determination
must be made under the traditional claim construction
principles, on an element-by-element basis, and in light of
evidence intrinsic and extrinsic to the asserted patents.
See, e.g., Personalized Media Commc’ns, LLC v. Int’l
Trade Comm’n, 161 F.3d 696, 702–04 (Fed. Cir. 1998)
(stating that “[w]hether certain claim language invokes
35 U.S.C. § 112, ¶ 6 is an exercise in claim construction”
and that the presumption that § 112, ¶ 6 does not apply
“can be rebutted if the evidence intrinsic to the patent and
any relevant extrinsic evidence so warrant”); Cole v.
Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996)
(noting that whether § 112, ¶ 6 is invoked involves an
analysis of the “patent and its prosecution history,” and
consulting a dictionary definition of “perforation” to
understand if one of skill in the art would understand the
term to connote structure). The district court failed to
undertake that inquiry and make related factual findings.
Neither of the limitations at issue uses the word
“means.” Presumptively, therefore, § 112, ¶ 6 does not
apply to the limitations. Apple argued that the limitations
must be construed under § 112, ¶ 6, but provided no
evidentiary support for that position. Accordingly, Apple
failed to carry its burden, and the presumption against
the application of § 112, ¶ 6 to the disputed limitations
remained unrebutted. The district court’s discussion is
revealing: its determination that the terms must be
construed as means-plus-function limitations is couched
in conclusory language. The court relied on Apple’s
arguments, contrasting them against Zeroclick’s contentions,
but pointed to no record evidence that supports its
ultimate conclusion regarding whether § 112, ¶ 6 applies
to the asserted claims. C


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