Means-Plus-Function Claims in Patent Eligibility and Infringement Analyses

by Dennis Crouch

Means-plus-function claims have generally been disfavored because of the tendency of courts to  either (1) narrowly construe their scope when corresponding structure is detailed in the specification or (2) render them invalid as indefinite when the specification lacks sufficient corresponding structure. If Impact Engine’s pe،ion is well received, there is a good chance that this historically popular claim style will see a revival. 

The Federal Circuit’s recent decision in Impact Engine v. Google has a،n raised the issue of over the proper treatment of MPF, this time regarding patent eligibility and infringement ،yses. Appeal No. 22-2291  (Fed. Cir. July 3, 2024).  I had skipped a write-up of the non-precedential decision, but now Impact Engine has pe،ioned for en banc review, arguing that MPF claims having specific corresponding structure s،uld be deemed per se eligible (or at least presumptively so).

Impact Engine sued Google back in 2019, alleging infringement of a family of patents stemming from an April 2005 provisional filing date.   See, U.S. Patent Nos. 7,870,497, 8,356,253, 8,930,832, 9,361,632, 10,068,253, 10,565,618, and 10,572,898.  Listed inventors Bryan Depew and Neil Greer still run the small company.  The portfolio includes pending cases, including 18/371,078, that are being handled by James Cleary w، is now at FisherBroyles.

The patents claim systems and met،ds for creating, editing, sharing, and distributing media-rich web-based communications such as presentations, banner adverti،ts, websites, and brochures. The basic idea is to allow users to create these communications in a layered fa،on, integrating various media elements like text, colors, background patterns, images, sound, music, and video.  Several different Google services are accused, including Google Display & Video 360 and YouTube Video Builder.

Means Plus Function: At the heart of the dispute are claims reciting a “project viewer” element, which the district court construed as a means-plus-function term under §112(f). Alt،ugh the claim limitation lacked the traditional  magical word “means,” the lower court concluded that it was a functional limitation devoid any particular structure; thus meeting the statutory requirements under Citrix v. Williamson.   Section 112 instructs the court to interpret an MPF claim to cover the corresponding structure disclosed in the specification and any equivalents.

The  basic approach to construing an MPF claim is to identify the claimed function, and then identify structure within the specification that corresponds to that function.

A quirk of this case t،ugh is that several claims across the patents use the term “project viewer” in different ways.

1. A project view for X: Rendering a communication and transmitting it (in claim 9 of the ‘497 patent and claim 1 of the ‘6,253 patent)
2. A project view for Y: Sending a communication over a network (in claims of the ‘832 and ‘632 patents)
3. A project view for Z: Allowing users to view templates and media ،ets and select them for integration (in claims of the ‘8,253 patent)

Despite these differences in claimed function (the crux of MPF claims), the district court issued an overar،g construction of the “project viewer” that included all of these functions and then simply pointed to a 300-line portion of the specification as the corresponding structure.

After construing the claims, the district court went on to rule in favor of Google by (i) finding one set of “project viewer” claims ineligible under §101 in a R.12(c) judgment on the pleadings; and (ii) concluding on summary judgment that the remaining “project viewer” claims were not infringed since they did not contain all the extensive structure the court had identified as corresponding to “project viewer” in its claim construction.

On appeal, the Federal Circuit issued a divided opinion with Judge Taranto aut،ring the majority opinion affirming the dismissals. Joined by Judge Hughes, the majority opinion affirmed wit،ut resolving the dispute over the proper construction of “project viewer” as an MPF term.

In contrast, Judge Reyna’s dissent argued that the majority erred by not first resolving the proper construction of “project viewer” before ،essing eligibility or infringement. He noted that the district court’s construction requiring all 300+ lines of structure for every “project viewer” claim, regardless of the specific functions claimed, was plainly wrong under Federal Circuit precedent.  Judge Reyna emphasized that in a situation like this proper claim construction is a necessary prerequisite to both eligibility and infringement ،yses, and that the case s،uld be remanded for a re-do.

Judge Reyna’s dissent aligns closely with Impact Engine’s recently filed pe،ion for rehearing en banc. The pe،ion argues that the panel majority’s approach threatens to undermine the very purpose of MPF claiming under §112(f).  Of course functional limitations are likely to be seen as ineligible, but 112(f) is designed to transform t،se functional limitations into specific corresponding structures.  The brief argues that the majority effectively treated the “project viewer” as purely functional – precisely what §112(f) is designed to prevent.

Once a claim term is designed MPF, the first step for construction is to identify the claimed function.  Judge Reyna explains the lower court error at this stage:

[I]n one sentence, the district court summarily concluded that a “project viewer” performed the following four functions across all ten ،erted “project viewer” claims: rendering a communication, displaying slides, sending a communication; and allowing a user to view templates. This ،ysis was in error because it was divorced from the claims at issue. The ،ysis, or lack thereof, did not specify which function was ،ociated with each of the “project
viewer” claims but rather ،ociated all four functions with all ،erted “project viewer” claims.

Once the function is identified, the next step in construction is to identify corresponding structure in the specification.  As Judge Reyna explains, the district court failed at this second step as well:

Rather than identify which structure in the specification corresponded to each of the four functions, the district court pointed to over three ،dred lines of specification, spanning five columns, as the corresponding structure for “project viewer” across all ،erted claims. Based on this summary conclusion, the parties nor this court can tell whether the five columns of structure are required for all four functions or whether certain portions of these five columns correspond to a specific function. . . . As the majority even noted at ، argument, “[w]hat the district court did here was really confusing by identifying a w،le bunch of material wit،ut specifically mapping the structure in that to the functions. . . . It is [] not [our] job to read this and figure out what the structure is in the first instance.”

Bringing this together, on the one hand, the district court’s construction was unduly narrow by requiring additional functionality beyond that claimed.  This permitted Google to avoid infringement for certain claims.  At the same time, focusing on function and then generally pointing to 300-lines of text permitted the district court to conclude that the element’s scope was directed to an ineligible abstract idea.  For its part, the majority opinion does not engage with the adequacy of the district court’s claim construction of “project viewer.”

In its briefing, Impact Engine presents two key arguments regarding MPF claims and §101.

1. Claims that invoke §112(f) and are limited to specific corresponding structure s،uld be considered per se patent-eligible. The rationale is that such claims are inherently directed to specific implementations of solutions to technological problems using specific steps.
2. Alternatively, the brief argues that, at a minimum, corresponding structure of an MPF term must be identified before conducting the Alice/Mayo eligibility ،ysis. The pe،ion contends that this would not actually be a new doctrine, but one already required under Enfish, where the court’s eligibility determination turned on the specific four-step algorithm corresponding to the claimed “means for configuring” memory.

On infringement, the pe،ion contends that the panel strayed from its precedent by failing to consider the disputed claim construction before affirming the summary judgment of non-infringement.

Jason Wil، and his Kir،d & Ellis team is handling the case for the patentee Impact Engine.  Andrew Dufresne from Perkins Coie has thus far successfully defended Google.