The Software IP Report

Specification Provides Insufficient Structure for MPF Claim

Granting summary judgement to a defendant accused of patent infringement, a court held two patent claims including the term “control unit” indefinite, finding the description in the specification of a “tone control circuit” did not provide sufficient structure to a person of skill in the art (POSITA) under 35 U.S.C. §112(6). Nichia Corp. v. VIZIO, Inc., No.: cv 8:16-0545 SJO (MRWx), (C.D. CA, March 13, 2019).

Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092 patent to be indefinite under 35 U.S.C. §112(6) for lack of sufficient structure in the specification for the claim term “control unit.”

Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092 patent to be indefinite under 35 U.S.C. §112(6) for lack of sufficient structure in the specification for the claim term “control unit.”

VIZIO argued that Claims 1 and 12 of the ‘092 patent are invalid for indefiniteness because they recite a “control unit for converting an input to pulse signals” without sufficient structure in the specification. VIZIO cited Williamson v. Citrix Online LLC, 782 F.3d 1339, 1348-48 (Fed. Cir. 2015) for stating that when a limitation “recit[es] a function be performed rather than reciting structure for performing that function,” the scope of the claim is limited “to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents.”.

The Court would ordinarily need to determine, as a first step, whether the claim term “control unit” constitutes a “nonce word” subject to means-plus function construction. Here, the parties stipulated that the term “control unit” is written in means-plus-function form and is to be interpreted under 35 U.S.C. §112(6), and further that the term corresponds to the “tone control circuit 604” in the specification. It remained for the Court to determine whether the “tone control circuit,” as disclosed in the specification connoted sufficient structure to the POSITA.

The Court initially rejected Nichia’s argument that the term “tone control circuit” connotes sufficient structure by itself because a POSITA would have understood it to be a circuit. Terms such “circuit” or “processor” can, when “combined with a description of the function of the circuit, connote[] sufficient structure to one of ordinary skill in the art to avoid §112(6) treatment.” Massachusetts Inst. of Tech. & Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1355 (Fed. Cir. 2006). The Court distinguished this case. Massachusetts Inst. of Tech. is directed to an initial stage of means-plus-function analysis, during which a rebuttable presumption applies that claims not explicitly using the term “means” are not implicated by §112(6). Here, the parties have stipulated to the application §112(6).

The ‘092 patent specification states that “[t]he tone control circuit 604 retrieves data from the RAM 603 and computes the duration of lighting the light emitting diodes of the LED display device 601, then outputs pulse signals for turning on and off the light emitting diodes to the LED display device 601” as the most comprehensive description. Further, Figure 10 of the specification discloses a block 604 labelled “Gradation control unit (CPU).”

Nichia argued that Figure 10 provides sufficient structure by identifying the element 604 as a CPU. The Court disagreed. The disclosed structure is required to be more than simply a general-purpose computer or microprocessor. Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed. Cir. 2008). The specification must additionally identify a corresponding algorithm sufficient to transform the generic component into a special-purpose device.

Nichia then argued that the specification contains the requisite algorithm, disclosing that the tone control circuit “computes pulse time,” or “computes the during of lighting the light emitting diodes.” The Court again disagreed, finding that the description is insufficient to set forth a “step-by-step procedure for accomplishing a given result.” Ergo Licensing LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012). Further, “[A] description of an algorithm that places no limitations on how values are calculated, combined, or weighed is insufficient to make the bounds of the claim understandable.” Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1382 (Fed. Cir. 2013)). Here, the algorithm states merely that values are computed, without providing insight into how this is performed. The language describes an outcome, not a means for achieving an outcome.

Nichia further argued that the knowledge of a POSITA is sufficient to provide such an algorithm. The Court once again disagreed. “A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013). To allow that form of claiming under §112(6) would allow the patentee to claim all possible means of achieving a function.” Id.

The Court thus held claims 1 and 12 of the ‘092 patent to be invalid for being indefinite.

Lessons for Practice

Patent practitioners to need plan for means plus function constructions, whether intended or not. Describe sufficient structure and/or sufficient algorithmic detail in the claims, together with proper support in the specification. If means-plus-function claiming is intended, then explicitly state to what the claim terms refer.

Here, Plaintiff Nichia was not prepared for the narrow interpretation of the specification that resulted from the application of §112(6). It is an unfortunate result for Plaintiff, as, not-withstanding the Court’s analysis, a “tone control circuit” as required in this application is in fact, a simple, well known function, easily within the grasp of the person of skill in the art.