Published 04/01/2022 by CIONCA IP TEAM (BS)
VDPP LLC owns US Patent Nos. 9,699,444; 9,9448,922; and 10,021,380, all of which have one or more claims disputed as indefinite by Vizio, Inc. The case went to court, and a previous decision from the United States District Court for the Central District of California backed Vizio’s statement that the claims are indefinite and therefore, invalid. “The district court’s judgment was based on its determination that certain claim limitations are drafted in means-plus-function format under § 112(f), and they have no disclosed corresponding structures.” VDPP appealed the decision, and the U.S. Federal Circuit Court of Appeals has jurisdiction.
VDPP owns the ’444, ’922, and ’380 patents (“the patents-in-suit”). The patents-in-suit are related to an apparatus that appears to create an “illusion of continuous movement.” For example, the apparatus can use two alternating images in its presentation to the viewer plus a third, “dissimilar bridging picture” to “create the optical illusion of a door forever cracking open.” “In one embodiment, the apparatus includes a processor and storage.” This appeal primarily revolves around one facet of the claimed invention: whether the limitations “processor” and “storage,” as recited in the claims, are drafted in means-plus-function format under § 112(f).
On January 7, 2020, VDPP sued Vizio, Inc., a company that manufactures and sells television sets. In its complaint, VDPP stated that Vizio’s “P-series” television sets infringe claims 1 and 27 of the ’444 patent, claim 2 of the ’922 patent, and claim 6 of the ’380 patent. In response, Vizio declared an affirmative defense of invalidity. “According to Vizio, the limitations “storage” and “processor” are drafted in means-plus-function format under § 112(f), and the specifications do not disclose structures that correspond to the recited functions of those limitations.”
The previous court ruled VDPP’s stated claims to be invalid as indefinite and “determined that the limitations “processor” and “storage” are subject to § 112(f) because the “asserted claims do not describe how [they] carry out the recited functions—only that they do.”
“A § 112(f) analysis consists of two steps. See Dyfan, LLC v. Target Corp., No. 2021-1725, — F.4th —, slip op. at 7 (Fed. Cir. 2022). At step one, we determine whether, as a threshold matter, § 112(f) applies to the claim limitation. See id. In making that determination, we have “long recognized the importance of the presence or absence of the word ‘means.’” Williamson, 792 F.3d at 1348. In the absence of the word means, we presume that a claim limitation is not subject to § 112(f). Id. To overcome that presumption, a challenger must “demonstrate that the [limitation] fails to ‘recite sufficiently definite structure.’”
“We have also recognized, however, that ‘the essential inquiry is not merely the presence or absence of the word ‘means’” but rather, whether the skilled artisan would Case: 21-2040 Document: 45 Page: 5 Filed: 03/25/2022 6 VDPP LLC v. VIZIO, INC. understand the limitation to “have a sufficiently definite meaning as the name for structure.’” VDPP makes a point that, because the disputed limitations lack the word “means,” there is a rebuttable presumption that they are not subject to § 112(f).
The U.S. Federal Circuit Court of Appeals was not persuaded by Vizio’s arguments that “the specifications fail to disclose structures capable of performing the claimed functions” and “because the limitations “processor” and “storage” inherently connote function, they are necessarily subject to § 112(f).” The Federal Court disagreed.
The Federal Court of Appeals observed that “[T]he mere fact that the disputed limitations incorporate functional language does not automatically convert [them] into means for performing such functions.” Zeroclick, 891 F.3d at 1008. “Many devices take their names from the functions they perform. Examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id. (quoting Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)). Accordingly, that the disputed limitations incorporate functional language— “processing” and “storing”—does not necessarily render them subject to § 112(f). Additionally, in the aforementioned case Dyfan, LLC v. Target Corp, though the district court determined that “the limitations “code” and “application” were subject to 112(f),” the Federal Court held that the defendant failed to show “that persons of ordinary skill in the art would not have understood the ‘code’/‘application’ limitations to connote structure in light of the claim as a whole.” The Federal Court observed that the same reasoning applied in VDPP LLC v. Vizio.
The Federal Court reversed the district court’s decision that the asserted claims are invalid as indefinite and remanded the case for further proceedings consistent with this opinion.
Full VDPP LLC v. Vizio, Inc. decision can be read here: https://cafc.uscourts.gov/opinions-orders/21-2040.OPINION.3-25-2022_1926745.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor
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