District Of Delaware Determines “Translator Device” Limitations Are Subject To Means-Plus-Function Strictures And Invalidates Claims As Indefinite
On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction. Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021). Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.
Pre-AIA Section 112, Paragraph 6 provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
This inquiry requires two steps. First, is the claim term covered by Section 112(6)? Second, if so, what are the claimed function(s) and the corresponding structure for performing those function(s)? If there is not sufficient corresponding structure for performing the function(s), the claim is invalid for indefiniteness.
In the first step, Federal Circuit precedent dictates that the appropriate inquiry for determining whether a claim limitation is subject to means-plus-function strictures “is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). When deciding if the claims had a sufficiently definite meaning, the court is to consider whether anything in the written description and prosecution history “might lead [the court] to construe that expression as the name of a sufficiently definite structure as to take the overall claim limitation out of the ambit of § 112.” Id. at 1351. Classic “nonce” words that typically do not connote sufficiently deficient structure—and therefore invoke Section 112(6)—include generic terms such as means, module, mechanism, element, and device. E.g., Mass. Ins. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006).
In the second step, for means-plus-function terms in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. E.g., Aristocrat Techs. Austl. Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
At issue in Peloton were the claim limitations “a  translator device adapted to translate data between the exercise communication protocol and the computer communication protocol” and “translator devices are configured to communicatively couple the first and second exercise devices to the means for comparing so as to facilitate communication of data representative of the performance of each of the plurality of users between the first and second exercise devices and the means for comparing.”
In analyzing these limitations, the Court first noted that “device” is a typical nonce word invoking Section 112(6) and does not itself provide any structure. Nor does “translator” add sufficient structure to device, “as it merely describes the function of the device.” Thus, the “translator device…” limitations were subject to Section 112(6).
Turning to the issue of sufficiently definite structure, the Court found that there was no corresponding algorithm for claimed function; rather, the only structure was generally described as hardware components (such as a microprocessor). Of note, the patent owner did not even attempt to identify any (only arguing that “translator device” was not a Section 112(6) term).
Accordingly, because the claims lacked corresponding structure for performing the claimed function, they were found to be invalid as indefinite.
This case is a good example of the risks of failing to disclose in the patent specification the necessary algorithms (whether by way of a flow chart, description or otherwise) for the computer-implemented inventions.