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Techno View IP, Inc. v. Facebook Technologies, LLC

United States District Court, D. Delaware

December 7, 2018

TECHNO VIEW IP, INC., Plaintiff,
v.
FACEBOOK TECHNOLOGIES, LLC and FACEBOOK, INC., Defendants.

          REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE

         In this 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.

         I. BACKGROUND AND STANDARD OF REVIEW

         The 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)

         II. DISCUSSION

         The 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)[1]Those disputes are: (1) whether Section 112, paragraph 6[2]applies 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)

         The Court will first examine relevant caselaw and will then turn to application of the caselaw to the "with a processor" terms.

         A. Caselaw on the Applicability of Section 112, Paragraph 6 as to: (1) Method Claims and (2) "Processor" Terms

         The 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.

         1. Caselaw Regarding the Applicability of Means-Plus-Function Analysis to Method Claims

         With 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 Gas).

         Yet on 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 n.1, 1367.

         Notably, 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 means-plus-function limitations").

         In yet 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.

         Beyond 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 claim.

         For 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 ...


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