Case 1:17-cv-00386-CFC-CJB Document 86 Filed 10/25/18 Page 1 of 3 PageID #: 950
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
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`(302) 658-9200 | (302) 658-3989 FAX
`October 25, 2018
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`VIA E-FILING
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`
`The Honorable Christopher J. Burke
`United States District Court
` For the District of Delaware
`844 North King Street
`Wilmington, DE 19801
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`Re: Techno View IP, Inc. v. Oculus VR, LLC et al.,
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`C.A. No. 17-386 (CFC)(CJB)
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`Dear Judge Burke:
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`We write on behalf of Defendants in response to the Court’s direction in its October 18,
`2018 Report and Recommendation for further letter briefing on the “with a processor” claim
`terms. (D.I. 85 at 20). Defendants do not contend that the “with a processor” claim terms
`invoke step-plus-function claiming under 35 U.S.C. § 112(6). Because “step-plus-function”
`analysis does not apply, Defendants have not performed such an analysis. Rather, the “with a
`processor” terms recite means-plus-function elements, as they recite physical (apparatus)
`components that invoke section 112(6) under Williamson v. Citrix Online, LLC, 792 F.3d 1339
`(Fed. Cir. 2015) (en banc).
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`TVIP’s arguments flow from the erroneous premise that method claims can only recite
`method steps. But method claims can (and often do) recite physical (apparatus) components that
`are used in carrying out the claimed method. For example, a claim could recite a method for
`building a house including a step of “driving nails using a hammer,” thus requiring a physical
`component (a hammer) for carrying out a step of the claimed method. That same hypothetical
`claim step could instead be written to recite “driving nails using a means for hitting,” thus
`claiming a physical component in means-plus-function form as part of a method step. Nothing in
`the patent laws precludes method claims from reciting physical components in means-plus-
`function format, and the “with a processor” claim terms are an example of this type of claiming.
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`It is therefore not surprising that both the Federal Circuit and district courts have found
`that method claims can recite apparatus elements that invoke means-plus-function treatment.
`See On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1341 (Fed. Cir. 2006); J &
`M Corp. v. Harley–Davidson, Inc., 269 F.3d 1360, 1364 n.1 (Fed. Cir. 2001). For example, the
`Federal Circuit in On Demand held that a clause in a method claim – “providing means for a
`customer to visually review said sales information” – was “in means-plus-function form pursuant
`to 35 U.S.C. § 112(6).” 442 F.3d at 1336, 1340-41 (emphasis added). In J & M Corp., the
`Federal Circuit explained that a method claim “contains a nearly identical means-plus-function
`limitation” to the apparatus claims, and analyzed the method and apparatus claims together. 269
`F.3d at 1364 n.1.
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`Case 1:17-cv-00386-CFC-CJB Document 86 Filed 10/25/18 Page 2 of 3 PageID #: 951
`The Honorable Christopher J. Burke
`October 25, 2018
`Page 2
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`This result is consistent with the plain language of 35 U.S.C. § 112, which makes clear
`that whether a claim is subject to “means-plus-function” treatment depends on the language of
`the particular claim element in question, regardless of the type of claim in which it is recited.
`See 35 U.S.C. § 112(6) (“An 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….”). Nothing in § 112(6) limits “means-plus-function” treatment to apparatus
`claims. The statute instead makes clear it applies when an “element in a claim” recites “a
`means … for specifying a specified function without the recital of structure [or] material … in
`support thereof,” and does not limit its applicability to particular types of claims. If Congress
`intended to limit “means-plus-function” treatment only to apparatus claims, it would have not
`written the statute to simply recite “an element in a claim,” which places no qualifications on the
`claim type.
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`Accordingly, a method claim that recites “using a means for” performing a function can
`invoke a means-plus-function analysis, as the Federal Circuit in On Demand and J & M Corp.
`confirmed. Conversely, an apparatus claim that recites a product “configured to perform a step
`for” performing a function, could invoke step-plus-function analysis. The bottom line is that the
`applicability of § 112(6) is determined on an element-by-element basis, based on the particular
`language of the claim element itself, without regard to the classification of the claim (e.g.
`apparatus, method, computer readable medium) in which the element is recited.
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`The cases cited in the Report and Recommendation do not change this result. Nothing in
`O.I. Corp. v. Tekmar Co. Inc., 115 F.3d 1576 (Fed. Cir. 1997), suggests that a method claim
`cannot recite a physical element that invokes means-plus-function treatment. O.I. Corp. merely
`explains how § 112(6) applies with respect to step-plus-function limitations. Id. at 1583. The
`case did not address, let alone hold, that means-plus-function analysis can never be applied to an
`element recited a method claim. Here, because the recited “processor” is a physical
`component – not a step – step-plus-function analysis does not apply to that claim element and
`O.I. Corp is thus not relevant. Id. at 1583.1
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`Similarly, the Federal Circuit in Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279
`F.3d 1022 (Fed. Cir. 2002), was not concerned with whether a method claim could recite a
`physical component implicating means-plus-function treatment. Just like O.I. Corp., Epcon Gas
`addressed the narrow question of whether a particular element in a method claim was in “step-
`plus-function” form. Id. at 1028. As such, the assertion in Epcon Gas that Section 112(6) is
`implicated for a method claim “only when steps plus function without acts are present,” does
`nothing more than articulate when a step-plus-function analysis may be appropriate. The court
`in Epcon Gas did not address whether means-plus-function analysis could apply to method
`claims.
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`Other district courts have observed that the Federal Circuit has never held that physical
`(apparatus) elements recited in method claims cannot invoke means-plus-function treatment. For
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`The Federal Circuit in O.I. Corp. found that the method claims did not invoke section
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`§ 112(6), while the apparatus claims did. But in O.I. Corp., the apparatus claims explicitly used
`“means” language, while the “parallel” method claims did not. Id. at 1583-84.
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`Case 1:17-cv-00386-CFC-CJB Document 86 Filed 10/25/18 Page 3 of 3 PageID #: 952
`The Honorable Christopher J. Burke
`October 25, 2018
`Page 3
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`example, the Northern District of California has explicitly found that “O.I. Corporation does not
`hold that the use of ‘means’ in a method claim falls outside of § 112 ¶ 6.” Network Appliance
`Inc. v. Sun Microsystems Inc., No. C-07-06053 EDL, 2008 WL 4193049, at *17 (N.D. Cal. Sept.
`10, 2008). In Network Appliance, an asserted method claim required the use of a “non-volatile
`storage means,” which the court found was written in means-plus-function format under
`§ 112(6). Id. at *16-17. Network Appliance further cited to On Demand and J & M Corp. to
`confirm that O.I. Corp. did not have the broad holding suggested by TVIP here. Id. at *17.
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`Nor did Williamson hold that method claims cannot invoke means-plus-function
`treatment. Rather, in dicta, Williamson summarized past case law that led to the heightened
`burden that Williamson overturned. Williamson, 792 F.3d at 1349. In particular, Williamson
`cites to Masco Corp. v. U.S., 303 F.3d 1316, 1327 (Fed. Cir. 2002), which, much like O.I. Corp.
`and Epcon Gas, deals solely with an analysis as to whether a specific claim is subject to step-
`plus-function treatment. Williamson, 792 F.3d. at 1349.
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`Because Federal Circuit and district court cases have found that method claims may
`recite physical elements subject to means-plus-function treatment, it follows that Williamson
`applies to method claims directed to software implemented inventions that recite nonce words
`such as “processor.” The Federal Circuit has done just that, finding that a claimed “compliance
`mechanism” in a method claim triggered § 112(6). Media Rights Techs., Inc. v. Capital One Fin.
`Corp., 800 F.3d 1366, 1373-74 (Fed. Cir. 2015). There was no need for the Federal Circuit in
`Media Rights to address any distinction between method and apparatus claims because the
`“compliance mechanism” element clearly triggered § 112(6). District courts have also applied
`§ 112(6) to apparatus elements of method claims post-Williamson. See Viatech Techs., Inc. v.
`Microsoft Corp., No. 14-1226-RGA, 2016 WL 3398025, at *2-3, 10 (D. Del. Jun. 14, 2016)
`(holding term “license monitor and control mechanism,” found in apparatus claim 1 and method
`claim 28, subject to construction under § 112(6)); Twin Peaks Software Inc. v. IBM Corp., No.
`14-cv-03933-JST, 2016 WL 1409748, at *11 (N.D. Cal. Apr. 11, 2016) (holding “mechanism for
`managing” term found in method claim to be a means-plus-function term). As explained
`previously, this result is correct under the plain language of the statute, which makes clear that
`application of § 112(6) is based on the element without regard to the broader classification of the
`claim (e.g. apparatus, method) in which the element is recited. See 35 U.S.C. § 112(6) (“An
`element in a claim for a combination may be expressed as a means or step for performing a
`specified function….”).
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`In conclusion, Defendants respectfully submit that the claimed “with a processor”
`element invokes § 112(6), consistent with both the plain language of the statute and Federal
`Circuit and district court precedent. Defendants respectfully request that the Court adopt their
`position that the “with a processor” terms be construed to be subject to § 112(6).
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`Respectfully,
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`/s/ Karen Jacobs
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`Karen Jacobs (#2881)
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