United States District Court, D. Delaware
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE
action filed by Plaintiff Techno View IP, Inc.
("Plaintiff) against Facebook Technologies, LLC and
Facebook, Inc. (collectively, "Defendants"),
Plaintiff alleges infringement of United States Patent Nos.
7, 666, 096 (the '"096 patent") and 8, 206, 218
(the "'218 patent"). Presently before the Court
is the matter of claim construction. The Court recommends
that the remaining claim construction-related dispute be
resolved in the manner set forth below.
BACKGROUND AND STANDARD OF REVIEW
Court hereby incorporates by reference the summary of the
factual and procedural background of this matter set out in
its August 15, 2018 Report and Recommendation ("August
15 R&R"). (D.I. 74 at 1-3) It additionally
incorporates by reference the legal principles regarding
claim construction set out in the August 15 R&R.
(Id. at 3-5)
parties had disputes regarding eight terms or sets of terms
(hereafter, "terms"). The Court has issued Report
and Recommendations addressing all eight terms. (D.I. 74, 76,
85) However, with respect to the eighth set of terms (the
"with a processor" terms found in claims 1 and 7 of
the '218 patent), the Court required supplemental
briefing from the parties before it could come to a final
decision regarding the relevant claim construction disputes.
(D.I. 85 at 19- 20)Those disputes are: (1) whether Section
112, paragraph 6applies to the "with a processor
terms, which are both found in method claims; and (2) in
making that determination, whether means-plus-function
analysis or step-plus-function analysis applies. The parties
have submitted their supplemental letter briefs, which
provided some helpful guidance with respect to this difficult
issue. (D.I. 86, 87) Defendants' position is that
although the "with a processor" terms are found in
method claims, they nevertheless recite a physical
(apparatus) component-the processor-that implicates
means-plus-function analysis; when this analysis is properly
performed, Defendants assert, Section 112, paragraph 6
applies to the claims. (D.I. 86; see also D.I. 53 at
16) Plaintiff, for its part, asserts that step-plus-function
analysis applies and that because the "with a
processor" claims recite both a step for performing a
particular function and an act in support thereof, the claims
ultimately do not invoke Section 112, paragraph 6. (D.I. 87;
see also D.I. 59 at 19-20)
Court will first examine relevant caselaw and will then turn
to application of the caselaw to the "with a
Caselaw on the Applicability of Section 112, Paragraph 6 as
to: (1) Method Claims and (2) "Processor"
Court will first examine the caselaw regarding the
applicability of means-plus-function analysis to method
claims, and then will look to cases analyzing whether the
term "processor" invoked Section 112, paragraph 6.
Each line of cases is helpful to understanding how to assess
the "with a processor" terms here.
Caselaw Regarding the Applicability of Means-Plus-Function
Analysis to Method Claims
regard to the applicability of means-plus-function analysis
to method claims, the caselaw from the United States Court of
Appeals for the Federal Circuit is a bit unclear. On the one
hand, as discussed in the October 18 R&R, there are some
Federal Circuit decisions that suggest that if a party argues
that a part of any method claim implicates Section
112, paragraph 6, then step-plus-function analysis applies.
See, e.g., O.I. Corp. v. Tekmar Co., Inc., 115 F.3d
1576, 1582-83 (Fed. Cir. 1997) ("address[ing] the
application of section 112, ¶ 6, generally to method
claims" and explaining that the statute's
reference to '"steps'" refers to the
"generic description of elements of a process, and the
term 'acts'  refer[s] to the implementation of such
steps") (emphasis added). Indeed, in Epcon Gas Sys.,
Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed.
Cir. 2002), the Federal Circuit stated, "[f]or a
method claim, § 112, paragraph 6 is implicated only
when steps plus function without acts are present." 279
F.3d at 1028 (emphasis added). These cases do not seem to
acknowledge that means-plus-function analysis could apply to
certain limitations in method claims. Cf.
Erflndergemeinschaft UroPep GbR v. Eli Lilly & Co.,
No. 2:15-CV-1202-WCB, 2016 WL 6138124, at *4-5 & n.5
(E.D. Tex. Oct. 21, 2016) (Bryson, J., sitting by
designation) (discussing O.I. Corp. and Epcon
the other hand, there are a few cases from the Federal
Circuit that have clearly applied means-plus-function
analysis to elements found in method claims. (See
D.I. 86 at 1-2) For example, in On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006), the
Federal Circuit affirmed the district court's application
of means-plus-function analysis to a limitation in a method
claim. 442 F.3d at 1336, 1340-41 (in a claim reciting a
"method of high speed manufacture of a single copy of a
book," the limitation "providing means for a
customer to visually review said sales information" was
correctly deemed to be in means-plus-function form).
Likewise, in J & M Corp. v. Harley-Davidson,
Inc., 269 F.3d 1360 (Fed. Cir. 2001), the Court
indicated that a method claim contained a
"means-plus-function limitation" that was
"nearly identical" to the limitation found in
apparatus claims reciting "'gripping means for
engaging the inner and outer surfaces of said helmet above
the bottom edge, the gripping means including a fulcrum
located below the bottom edge.'" 269 F.3d at 1364
both of the limitations at issue in On Demand and J &
M Corp. expressly recited the term "means."
And so it is more understandable why, in such circumstances,
a court might have thought to apply a means-plus-function
analysis there. As the Federal Circuit explained in O.I.
Corp., "[t]he word 'means' clearly refers
to the generic description of an apparatus element, and the
implementation of such a concept is obviously by structure or
material." 115 F.3d at 1582; see also Semcon Tech,
LLC v. Micron Tech., Inc., Civil Action No. 12-532-RGA,
2014 WL 4447017, at *6 (D. Del. Sept. 9, 2014) (rejecting the
defendant's argument that a limitation in a method claim
invoked means-plus-function analysis and explaining that
On Demand and J & M Corp. were
"distinguishable" in that the terms at issue in
those cases contained the phrase '"means'"
which generated "a presumption in favor of 
application" of means-plus-function analysis in those
cases); Network Appliance Inc. v. Sun Microsys.
Inc., No. C-07-06053 EDI, 2008 WL 4193049, at *17 (N.D.
Cal. Sept. 10, 2008) (explaining that "O.I.
Corporation does not hold that the use of
'means' in a method claim falls outside of § 112
¶ 6" and that "the Federal Circuit has
construed 'means' terms in method claims as
another case before the Federal Circuit, Media Rights
Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366
(Fed. Cir. 2015), the Court applied means-plus-function
analysis to elements in every asserted claim, including
method claims; these claims did not expressly recite the term
"means" or "means for" but instead
contained the term "compliance mechanism." 800 F.3d
at 1368-69, 1370-71. The Media Rights Court
discussed in detail a representative method claim that was
"illustrative of the invention"; the claim recited
a "method of preventing unauthorized recording of
electronic media" via, inter alia,
"[activating a compliance mechanism[.]"
Id., at 1368-69. It was undisputed there that the
term "compliance mechanism" had "no commonly
understood meaning and is not generally viewed by one skilled
in the art to connote a particular structure."
Id. at 1372; see also Id. at 1373 ("We
have never found that the term 'mechanism'-without
more-connotes an identifiable structure; certainly, merely
adding the modifier 'compliance' to that term would
not do so either."). And the Federal Circuit ultimately
affirmed the district court's application of
means-plus-function analysis to the term "compliance
mechanism," as well as the district court's finding
that the term was a means-plus-function limitation.
Id. at 1373-74.
these Federal Circuit decisions, at the district court level,
courts have at times suggested that means-plus-function
analysis could be applicable to a limitation in a method
example, in Alacritech, Inc. v. Century Link Commc'ns
LLC,271 F.Supp.3d 850 (E.D. Tex. 2017), the Court
explained that method claims could include structural
limitations that either: (1) "require the steps of the
method to be performed in, by, or on a specific
structure" or (2) do not "meaningfully alter the
scope of the claims." 271 F.Supp.3d at 886-87 (emphasis
added). The Alacritech Court cited to Cox
Commc'ns, Inc. v. Sprint Commc'n Co., 838 F.3d
1224, 1229-30 (Fed. Cir. 2016) as a case involving an example
of the latter scenario, where the Federal Circuit explained
that the structural limitation "processing system"
played no discernible role in defining the scope of the
method claims where "the point of novelty resides with
the steps of the methods, not with the machine that
performs them." 271 F.Supp.3d at 887 (citing 838 F.3d at
1229-30). The former scenario was at play in
Alacritech, where the Court concluded that the
"mechanism" terms recited in the method claims
played a "meaningful role in defining claim scope."
Id. at 886-87. Although the "mechanism"
terms at issue did not include "means" language,
the Court found that the terms were governed by Section 112,
paragraph 6 and that means-plus-function ...