Means-Plus-Function Claims And The Search For Adequate Structural Support

In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the district court's determination of invalidity for indefiniteness. It found the claims at issue to be means-plus-function claims, and lacking adequate support in the specification for the two disputed claim terms' recited functions. This case follows in the wake of Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc), where the en banc Federal Circuit expressly overruled the "strong" presumption that limitations lacking the word "means" are not subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA).

Media Rights filed suit against Capital One, alleging infringement of U.S. Patent No. 7,316,033 ("the '033 patent"), entitled "Method of Controlling Recording of Media." The '033 patent prevents unauthorized recording via a "compliance mechanism," which diverts incoming media content protected by law or agreement from being outputted by a system, in order to stop the illegal copying or sharing of that content.

All of the claims include the limitation "compliance mechanism," as shown by illustrative claim 1:

1. A method of preventing unauthorized recording of electronic media comprising: activating a compliance mechanism in response to receiving media content by a client system, said compliance mechanism coupled to said client system, said client system having a media content presentation application operable thereon and coupled to said compliance mechanism; controlling a data output path of said client system with said compliance mechanism by diverting a commonly used data pathway of said media player application to a controlled data pathway monitored by said compliance mechanism; and

directing said media content to a custom media device coupled to said compliance mechanism via said data output path, for selectively restricting output of said media content.

'033 patent col. 36 11. 19-34 (emphases added).

On the same day that Capital One filed its opening claim construction brief in district court, it also filed a motion for judgment on the pleadings for invalidity under 35 U.S.C. §§ 101 and 112(b). As the motion largely turned on claim construction of the '033 patent, the district court held a Markman hearing and heard argument on a Rule 12(c) motion that same day. It concluded that all of the claims of the '033 patent are invalid because they all contain the terms "compliance mechanism" and...