Holding: Connecting terms in a claim such as “operable to” and “configured to” do not automatically suggest that a term is structural when determining whether a claim term is in means-plus-function format. If a claimed function is performed by a general-purpose computer, then the specification must disclose the algorithm that the computer performs to accomplish that function as the corresponding structure for a means plus function term.
Fintiv sued PayPal for patent infringement of four patents that are related to cloud-based transaction and payment systems. Each of the four patents include asserted claims that reference a “payment handler service” or a “payment handler” that uses APIs of different payment processors. At claim construction at the district court, these claim terms were found to be means plus function elements and subject to pre-AIA 35 U.S.C. §112 ¶6. However, the specification of the patents only includes a textual description of the payment handler terms that is substantially identical to the claim language. Since the specifications lacked adequate structure corresponding to the claimed function of the payment handler terms, the district court found these terms to be indefinite and held the asserted claims invalid.
The Federal Circuit first looked to whether the payment handler terms were properly determined to be means plus function elements. Since the claims did not use the word “means,” there is a rebuttable presumption that Section 112, ¶6 does not apply. However, this presumption can be overcome if the claim term fails to recite sufficiently definite structure or recites function without reciting sufficient structure for performing the function. The Federal Circuit agreed with PayPal, finding that the claim language lacks sufficient structure.
Fintiv argued that the “handler” term by itself or the “payment handler” term as a whole provides enough structure. However, the district court had looked to technical dictionaries to conclude that “handler” does not connote structure to a person of ordinary skill in the art, and the addition of the prefix “payment” merely suggests function rather than provides structure. Fintiv further argued that connecting terms in the claims, such as “that,” “operable to,” and “configured to” are often used with structure terms rather than functional terms. However, the Federal Circuit stated that there is no blanket rule that those connecting words automatically suggest that terms are structural. Instead, Section 112, ¶6 depends on the specific context of the patent at issue.
The ”payment handler” terms also do not qualify as software structures. It is possible for software to act as structure, but the terms used should be recognizable as software structure by a person of ordinary skill in the art. In this case, there was no testimony provided to show that a person of ordinary skill in the art would recognize a “payment handler” as a certain software structure. Instead, this term is a black box recitation of structure that could be used as a substitute for the term “means.”
After finding that the “payment handler” terms were properly determined to invoke Section 112, ¶6, the Federal Circuit then looked to identify the corresponding structure for a payment handler in the specification of the asserted payments. For means plus function terms, the specification must disclose sufficient structure to perform the claim function. If the function is performed by a general-purpose computer or a microprocessor, then the specification must disclose the algorithm that the computer performs to accomplish that function.
In this case, the specifications of the asserted patents do not disclose an algorithm that performs the payment handler functions that are claimed. Instead, the specifications only refer to the generic process of translating APIs and do not provide any additional disclosure other than reciting generic terms and what is already in the claims. Merely describing the results of of an unspecified algorithm on a general-purpose computer does not constitute sufficient structure to satisfy Section 112, ¶6. Therefore, the asserted claims of the Fintiv patents were confirmed to be invalid.
Leave a Reply