Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 1 of 17 PageID #: 958
`Case 1:17-cv-00386—CFC-CJB Document 89 Filed 12/07/18 Page 1 of 17 PageID #: 958
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`TECHNO VIEW IP, INC.,
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`Plaintiff,
`
`v.
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`FACEBOOK TECHNOLOGIES, LLC and
`FACEBOOK, INC,
`
`Defendants.
`
`vvvvvvvvvv
`
`Civil Action No. 17-3 86-CFC-CJB
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`REPORT AND RECOMMENDATION
`
`In this action filed by Plaintiff Techno View IP, Inc. (“Plaintiff”) against Facebook
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`Technologies, LLC and Facebook, Inc. (collectively, “‘Defendants”), Plaintiff alleges
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`infringement of United States Patent Nos. 7,666,096 (the “'096 patent”) and 8,206,218 (the “'218
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`patent”). Presently before the Court is the matter of claim construction. The Court recommends
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`that the remaining claim construction-related dispute be resolved in the manner set forth below.
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`I.
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`BACKGROUND AND STANDARD OF REVIEW
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`The Couit hereby incorporates by reference the summary of the factual and procedural
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`background of this matter set out in its August 15, 2018 Report and Recommendation (“August
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`15 R&R”). (D.I. 74 at 1—3) It additionally incorporates by reference the legal principles
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`regarding claim construction set out in the August 15 R&R.
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`(Id. at 3—5)
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`II.
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`DISCUSSION
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`The parties had disputes regarding eight terms or sets of terms (hereafter, “terms”). The
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`Court has issued Report and Recommendations addressing all eight terms. (BI. 74, 76, 85)
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`However, with respect to the eighth set of terms (the “with a processor” terms found in claims 1
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`and 7 of the '218 patent), the Court required supplemental briefing from the parties before it
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`could come to a final decision regarding the relevant claim construction disputes. (D1. 85 at 19-
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`

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`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 2 of 17 PageID #: 959
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`20)1 Those disputes are: (1) whether Section 112, paragraph 62 applies to the “with a processor”
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`terms, which are both found in method claims; and (2) in making that determination, whether
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`means-plus-function analysis or step—plus-function analysis applies. The parties have submitted
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`their supplemental letter briefs, which provided some helpful guidance with respect to this
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`difficult issue. (D.I. 86, 87) Defendants’ position is that although the “with a processor” terms
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`are found in method claims, they nevertheless recite a physical (apparatus) component—the
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`processor—~that implicates means—plus-function analysis; when this analysis is properly
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`performed, Defendants assert, Section 112, paragraph 6 applies to the claims. (D.I. 86; see also
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`D1. 53 at 16) Plaintiff, for its part, asserts that step-plus~function analysis applies and that
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`because the “with a processor” claims recite both a step for performing a particular function and
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`an act in support thereof, the claims ultimately do not invoke Section 112, paragraph 6. (D1. 87;
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`see also D1. 59 at 19-20)
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`The Court will first examine relevant caselaw and will then turn to application of the
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`caselaw to the “with a processor” terms.
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`A.
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`Caselaw on the Applicability of Section 112, Paragraph 6 as to:
`Claims and (2) “Processor” Terms
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`(1) Method
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`The Court hereby incorporates by reference its discussion of the “with a
`‘
`processor” terms set out in its October 18, 2018 Report and Recommendation (“October 18
`R&R”). (D1. 85 at 10-20)
`
`2
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`Section 112, paragraph 6 provided as follows:
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`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, and such
`claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents
`thereof.
`
`35 U.S.C.§112, 11 6.
`
`

`

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`The Court will first examine the caselaw regarding the applicability of means-plus-
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`function analysis to method claims, and then will look to cases analyzing whether the term
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`“processor” invoked Section 112, paragraph 6. Each line of cases is helpful to understanding
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`how to assess the “with a processor” terms here.
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`1.
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`Caselaw Regarding the Applicability of Means-Plus-Function
`Analysis to Method Claims
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`With regard to the applicability of means-plus-function analysis to method claims, the
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`caselaw from the United States Court of Appeals for the Federal Circuit is a bit unclear. On the
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`one hand, as discussed in the October 18 R&R, there are some Federal Circuit decisions that
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`suggest that if a party argues that a part of any method claim implicates Section 112, paragraph
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`6, then step-plus-function analysis applies. See, e. g., OI Corp. v. Tekmar Co., Inc, 115 F.3d
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`1576, 1582-83 (Fed. Cir. 1997) (“address[ing] the application of section 112, 1] 6, generally to
`“6
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`method claims” and explaining that the statute’s reference to
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`steps’” refers to the “generic
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`description of elements of a process, and the term ‘acts’ [] refer[s] to the implementation of such
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`steps”) (emphasis added). Indeed, in Epcon Gas Sys, Inc. v. Bauer Compressors, Inc, 279 F.3d
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`1022 (Fed. Cir. 2002), the Federal Circuit stated, “[f]0r a method claim, § 112, paragraph 6 is
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`implicated only when steps plus function without acts are presen .” 279 F.3d at 1028 (emphasis
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`added). These cases do not seem to acknowledge that means—plus-function analysis could apply
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`to certain limitations in method claims. Cf Erfindergemez'nschafl UroPep GbR v. Eli Lilly &
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`Ca, Case No. 2:15—CV—1202-WCB, 2016 WL 6138124, at *4-5 & n.5 (ED. Tex. Oct. 21, 2016)
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`(Bryson, J ., sitting by designation) (discussing 0.1. Corp. and Epcon Gas).
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`Yet on the other hand, there are a few cases from the Federal Circuit that have clearly
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`applied means—plus—function analysis to elements found in method claims.
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`(See D.I. 86 at 1-2)
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`

`

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`For example, in On Demand Mach. Corp. v. Ingram Indus, Inc, 442 F.3d 1331 (Fed. Cir. 2006),
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`the Federal Circuit affirmed the district court’s application of means-plus-function analysis to a
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`limitation in a method claim. 442 F.3d at 1336, 1340—41 (in a claim reciting a “method of high
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`speed manufacture of a single copy of a book,” the limitation “providing means for a customer to
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`visually review said sales information” was correctly deemed to be in means-plus—function
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`form). Likewise, in J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360 (Fed. Cir. 2001), the
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`Court indicated that a method claim contained a “means—plus-function limitation” that was
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`“nearly identical” to the limitation found in apparatus claims reciting “‘ gripping means for
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`engaging the inner and outer surfaces of said helmet above the bottom edge, the gripping means
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`including a fulcrum located below the bottom edge.’” 269 F.3d at 1364 n.1, 1367.
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`Notably, both of the limitations at issue in On Demand and J & M Corp. expressly recited
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`the term “means.” And so it is more understandable why, in such circumstances, a court might
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`have thought to apply a means-plus-function analysis there. As the Federal Circuit explained in
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`0.1. Corp, “[t]he word ‘means’ clearly refers to the generic description of an apparatus element,
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`and the implementation of such a concept is obviously by structure or material.” 115 F.3d at
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`1582; see also Semcon Tech, LLC v. Micron Tech, Inc., Civil Action No. 12-532—RGA, 2014
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`WL 4447017, at *6 (D. Del. Sept. 9, 2014) (rejecting the defendant’s argument that a limitation
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`in a method claim invoked means-plus-function analysis and explaining that On Demand and J
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`& M Corp. were “distinguishable” in that the terms at issue in those cases contained the phrase
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`“‘means’” which generated “a presumption in favor of [] application” of means-plus—function
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`analysis in those cases); Network Appliance Inc. v. Sun Microsys. Inc., No. C—07-06053 EDI,
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`2008 WL 4193049, at *17 (N .D. Cal. Sept. 10, 2008) (explaining that “0.1. Corporation does not
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`

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`hold that the use of ‘means’ in a method claim falls outside of § 112 1] 6” and that “the Federal
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`Circuit has construed ‘means’ terms in method claims as means—plus-function limitations”).
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`In yet another case before the Federal Circuit, Media Rights Techs., Inc. v. Capital One
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`Fin. Corp, 800 F.3d 1366 (Fed. Cir. 2015), the Court applied means-plus-function analysis to
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`elements in every asserted claim, including method claims; these claims did not expressly recite
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`the term “means” or “means for” but instead contained the term “compliance mechanism.” 800
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`F.3d at 1368—69, 1370—71. The Media Rights Court discussed in detail a representative method
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`claim that was “illustrative of the invention”; the claim recited a “method of preventing
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`unauthorized recording of electronic media” via, inter alia, “[a]ctivating a compliance
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`mechanism[.]” Id. at 1368-69. It was undisputed there that the term “compliance mechanism”
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`had “no commonly understood meaning and is not generally viewed by one skilled in the art to
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`connote a particular structure.” Id. at 1372; see also id. at 1373 (“We have never found that the
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`term ‘mechanism’wwithout more—connotes an identifiable structure; certainly, merely adding
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`the modifier ‘compliance’ to that term would not do so either.”). And the Federal Circuit
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`ultimately affirmed the district court’s application of means-plus-function analysis to the term
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`“compliance mechanism,” as well as the district court’s finding that the term was a means-plus-
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`function limitation.
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`Id. at 1373-74.
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`Beyond these Federal Circuit decisions, at the district court level, courts have at times
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`suggested that means-plus—function analysis could be applicable to a limitation in a method
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`claim.
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`For example, in Alacritech, Inc. v. Century Link Cammc ’ns LLC, 271 F. Supp. 3d 850
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`(ED. Tex. 2017), the Court explained that method claims could include structural limitations
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`that either:
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`(1) “require the steps of the method to be performed in, by, or on a specific structure”
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`5
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`

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`or (2) do not “meaningfully alter the scope of the claims.” 271 F. Supp. 3d at 886-87 (emphasis
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`added). The Alacritech Court cited to Cox Comma ’ns, Inc. v. Sprint Comma ’17 C0., 838 F.3d
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`1224, 1229—30 (Fed. Cir. 2016) as a case involving an example of the latter scenario, where the
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`Federal Circuit explained that the structural limitation “processing system” played no discernible
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`role in defining the scope of the method claims where “the point of novelty resides with the steps
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`of the[] methods, not with the machine that performs them.” 271 F. Supp. 3d at 887 (citing 838
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`F.3d at 1229-30). The former scenario was at play in Alacrz'tech, where the Court concluded that
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`the “mechanism” terms recited in the method claims played a “meaningful role in defining claim
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`scope.” Id. at 886~87. Although the “mechanism” terms at issue did not include “means”
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`language, the Court found that the terms were governed by Section 112, paragraph 6 and that
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`means-plus-function analysis should apply; this was because the term “mechanism” was being
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`used “equivalently to ‘means,’ a nonce word indicating structure for performing a function but
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`that does not indicate a definite structure.” Id. at 887~88.
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`In Ely’indergemeinschaft UroPep GbR v. Eli Lilly & Ca, Case No. 2:15-CV-1202-WCB,
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`2016 WL 6138124, (E.D. Tex. Oct. 21, 2016) (Bryson, J., sitting by designation), Judge Bryson
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`held that means-plus-function analysis was not applicable to the method claims at issue (directed
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`to a method of treatment of prophylaxis of a person affected with benign prostatic hyperplasia
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`(“BPH”)), though such claims did also recite a structural element (a PDE V inhibitor). 2016 WL
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`6138124, at *1, *5. In rejecting the defendant’s argument that means-plus-function analysis
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`should apply to that structural element, Judge Bryson explained that the patent’s invention was
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`not PDE V inhibitors themselves—those were well—known by the time of the invention—but
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`instead was “the invention of a treatment [for BPH] using compounds that have that effect.” Id.
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`at *5-6 (emphasis added). He noted that “the flaw that led to the enactment of Section 112,
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`6
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`

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`paragraph 6” was the use of “‘conveniently functional language at the exact point ofnovelty[,]
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`9”
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`and concluded that the use of the term “an inhibitor of phosphodiesterase (PDE) V” failed to
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`convert the claims into ones for which Section 112, paragraph 6 was meant to apply. Id at 6
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`(quoting Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997)
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`(emphasis added)). Thus, it is possible to read this decision as allowing for application of
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`means-plus-function analysis to a structural element in a method claim only ifthat element
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`amounts to the “point of novelty” in the invention.
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`A case from this Court, Semcon Tech, LLC v. Micron Tech, Inc, Civil Action No. 12-
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`532—RGA, 2014 WL 4447017 (D. Del. Sept. 9, 2014), also seems to acknowledge that means—
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`plus—function analysis could apply to a structural element in a method claim—if that element
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`amounted to the advance over prior art. In Semcon, the Court found that the “processor” terms in
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`the method claims of the patent were not properly construed under means-plus-function analysis.
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`2014 WL 447017, at *5. The Semcon Court observed that cou1ts “have been particularly
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`reluctant to construe terms in method claims as means~plus-function limitations, absent the
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`drafter’s use of the word ‘means’ in the claim language.” Id at *6. Further, the Court noted that
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`it is not remarkable that method claims would disclose a device that is used in the performance
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`of the method without detailing the device’s structure, since the invention claimed is a method.
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`Id. To that end, the Court explained that the inventive concept embodied in the asserted patent
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`“is the ability to dynamically adjust control parameters using real time information during the
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`polishing of a semiconductor wafer” and “[t]he particular processor used to evaluate these
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`various pieces of information is not central to the invention, and the fact that it was not described
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`in detail is neither surprising nor fatal to the [asserted] patent claims’ validity.” Id.
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`Thus, these Federal Circuit and district court cases, read together, suggest that if a party
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`7
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`

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`asserts that a method claim element including a structural limitation invokes Section 112,
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`paragraph 6, step-plus—function analysis applies, unless:
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`(1) the claim element recites “means”
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`(or a similar term); and/or (2) the structural limitation clearly constitutes the point of novelty in
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`the invention or meaningfully alters claim scope. In those latter scenarios, the cases suggest that
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`means-plus-function analysis would apply.
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`2.
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`District Court Cases Involving Claims With 3 “Processor” for
`Performing a Function
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`Out of an abundance of caution, the Court will also consider here a line of district court
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`cases examining whether claim limitations reciting a “processor” for performing a function
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`invoke Section 112, paragraph 6.3
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`At the outset, the Court notes that the vast majority of these cases assess system claims,
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`not method claims. In the main, this line of cases looks at whether the claims describe how the
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`processor performs the function and whether the specification sets out structural information
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`about the processor. And for the most part, courts have ultimately concluded that “processor”
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`terms failed to invoke Section 112, paragraph 6. It has been observed that “in many instances,
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`the term ‘processor’ itself connotes sufficient structure and is not a ‘nonce’ or ‘functional’ word
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`that is subject to the limitations of” Section 112, paragraph 6. St. Isidore Research, LLC v.
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`Comerica Inc., Case No. 2:15-cv-1390-JRG-RSP, 2016 WL 4988246, at *14 (ED. Tex. Sept.
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`The Federal Circuit has not yet had occasion to address the extent to which the
`3
`use of the term “processor” invokes application of Section 112, paragraph 6, though that issue is
`presently on appeal to the Federal Circuit. See Brief of Appellant at 22, 29-35, Konamz‘ Gaming
`Inc. v. High 5 Games, LLC, No. 2018—1723, (D.I. 22) (Fed. Cir. June 28, 2018); Reply Brief of
`Appellant at 8-11, Konamz‘ Gaming Inc. v. High 5 Games, LLC, No. 2018-1723, (D.I. 39) (Fed.
`Cir. Sept. 20, 2018) (arguing that the district court:
`(1) ignored differences between apparatus,
`method and computer readable medium claims in applying Section 112, paragraph 6; and (2)
`improperly deemed “processor” to be a nonce word).
`8
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`

`

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`19, 2016); see also Odyssey Wireless, Inc. v. Apple Inc., CASE NOS. 15-CV—l735-H (RBB),
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`2016 WL 3055900, at *12 (SD. Cal. Mar. 30, 2016) (“Indeed, several district courts post—
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`[Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)] have concluded that
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`the term ‘processor’ sufficiently connotes a definite structure to a person of ordinary skill in the
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`art, and, therefore, found [Section 112, paragraph 6] did not apply to a claim or claims that used
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`the term ‘processor.
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`) (citing cases).4
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`>95
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`The Cow“: first looks to two cases involving method claims that recited a “processor.” In
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`Quanergy Sys, Inc. v. Velodyne Lidar, Inc., Case No. 15~cv-05251-EJD, 2017 WL 4410174
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`(N.D. Cal. Oct. 4, 2017), the Couit concluded that disputed phrases including the language
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`“processor being configured to .
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`.
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`.” found in both system and method claims were not means-
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`plus-function terms invoking Section 112, paragraph 6. 2017 WL 4410174, at *16-17, 19. The
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`Court noted that the plain language of the claims “describes how the processor interacts with
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`other components” and the specification provided structural information regarding the processor.
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`Id at * 19. In light of this, the Court held that “the ‘processor’ is not simply a black box
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`In some of the cases cited in this subsection, courts utilized means-plus-function
`4
`analysis. Recall that when applying means—plus-function analysis, a court first looks to see if the
`term “means” or “means for” is used in the claim limitation. If the claim limitation does not use
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`the term “means” or “means for” there is a rebuttable presumption that Section 112, paragraph 6
`does not apply. Williamson, 792 F.3d at 1348. The presumption can be overcome if “the claim
`term fails to recite[] sufficiently definite structure or else recites function without reciting
`sufficient structure for performing that function.” Id. (internal quotation marks and citation
`omitted). The Federal Circuit has explained that in undertaking this analysis, the court must “ask
`if the claim language, read in light of the specification, recites sufficiently definite structure to
`avoid” Section 112, paragraph 6. Media Rights, 800 F.3d at 1371—72 (internal quotation marks
`and citation omitted). The party challenging the presumption “bears the burden of overcoming
`the presumption that Section 112, [paragraph] 6 does not apply by a preponderance of the
`evidence.” Apple Inc. v. Motorola, Inc., 757 F .3d 1286, 1298 (Fed. Cir. 2014), overruled on
`other grounds, Williamson, 792 F .3d at 1349.
`
`

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`recitation of structure for providing the same specified function as if the term ‘means’ had been
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`used.” Id Likewise, in Semcon Tech, which, as described above, involved method claims, this
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`Court determined that the processor terms found therein did not invoke Section 112, paragraph 6.
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`This was because the claim language indicated that the processor was a component of the
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`finishing control subsystem, and the specification “details the location of the processor within the
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`invention, the type of processor suitable for carrying out the invention’s requirements, and the
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`desired capabilities possessed by a preferred processor.” 2014 WL 4447017, at *5-6.
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`As for cases involving only apparatus claims that recited processors configured to
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`perform particular functions, those cases seem to reference the same Section 112, paragraph 6-
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`related guideposts. As a starting point, some courts have recognized that generally, while
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`“processor” may not define a specific structure, it does at least describe a class of known
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`structures, unlike terms such as “means,” “device,” or “element.” Syncpoinz‘ Imaging, LLC v.
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`Nintendo ofAm. Inc., Case No. 2:15-cv—00247-JRG-RSP, 2016 WL 55118, at * 19 (ED. Tex.
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`Jan. 5, 2016); see also, e.g., Odyssey Wireless, 2016 WL 3055900, at *1 l; FitnessAge Servs.,
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`Inc. v. Polar Electra, Inc, No. 2:11-cv-01444—MMD—GWF, 2014 WL 551335, at *5 (D. Nev.
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`Feb. 10, 2014) (“The Court agrees with Plaintiff that in the common parlance of software
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`engineering the term ‘processor’ sufficiently designates the structure for determining the overall
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`fitness age”).5 Additionally, these courts look to whether the claim describes how the processor
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`performs the function, and whether a person of ordinary skill in the art could understand how the
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`This would seem to distinguish a case like Media Rights, where the term at issue
`5
`(“compliance mechanism”) did not have a commonly understood meaning and was not
`considered to connote any particular structure by one skilled in the art. Media Rights, 800 F.3d
`at 1372.
`
`10
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`

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`processor interacts with other components of the claims. For example, in 3G Licensing, SA. v.
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`Blackberry Ltd, CA. No. 17—82—LPS-CJB, 2018 WL 4375091 (D. Del. Sept. 13, 2018), the
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`Court found that the claim limitation “processor further being configured to, in response to the
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`indication, initiate a second call to the remote videophone, the second call not supporting the
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`second media” did not invoke Section 112, paragraph 6 where the claim provided an input-
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`output structure for the processor and the specification described the processor’s interaction with
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`other components and how it initiates the second call. 2018 WL 4375091, at *7 (internal
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`V quotation marks and emphasis omitted); see also, e. g, Odyssey Wireless, 2016 WL 3055900, at
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`*11; Syncpoint Imaging, 2016 WL 55118, at *17—20; Masimo Corp. v. Philips Elecs. N. Am.
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`Corp, CA. No. 09-80-LPS, CA. No. ll—742-LPS, 2015 WL 7737308, at *8 (D. Del. Dec. 1,
`
`2015).6
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`Some courts that have found “processor” terms to fall outside of Section 112,
`6
`paragraph 6’s ambit have explained that a court should not apply a per se rule to the effect that
`when a claim discloses a “processor” alone, it does not connote sufficient structure to avoid
`invoking Section 112, paragraph 6, or that a disclosure of a “processor” in such claims
`necessarily requires an algorithm to give the processor structure.
`(Some cases, see Personal
`Audio, LLC v. Apple, Inc, CIVIL ACTION No. 9:09CV111, 2011 WL 11757163, at *21-22 &
`n.13 (ED. Tex. Jan. 31, 2011), relying on Aristocrat Techs. Australia Pty Ltd v. Int ’1 Game
`Tech, 521 F.3d 1328 (Fed. Cir. 2008)), had apparently employed such rules.). See, e. g.,
`Syncpoint Imaging, 2016 WL 55118, at *18; FitnessAge Servs., 2014 WL 551335, at *5. These
`courts note that the Aristocrat rule (i.e., that if a patentee utilizes computer-implemented means-
`plus—function claiming, the corresponding structure in the specification for the function must be
`an algorithm unless a general purpose computer is sufficient for performing the function) applies
`only after Section 112, paragraph 6 has been invoked; it does not apply when determining
`whether the statute should be invoked. See Cellular Commc ’ns Equipment LLC v. HTC Corp,
`CASE NO. 6:16-CV-475-KNM, 2018 WL 316472, at *8 (ED. Tex. Jan. 8, 2018); Syncpoint
`Imaging, 2016 WL 55118, at *18; FitnessAge Servs., 2014 WL 551335, at *5; see also Apple
`Inc, 757 F .3d at 1298 (“Hence, where a claim is not drafted in means-plus-function format, the
`reasoning in the Aristocrat line of cases does not automatically apply, and an algorithm is
`therefore not necessarily required”). In other words, the standard used to prove sufficient
`structure to avoid implication of Section 112, paragraph 6 is not the same standard as that used to
`identify corresponding structure in the specification to support a means-plus-function claim
`11
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`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 12 of 17 PageID #: 969
`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 12 of 17 PageID #: 969
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`In contrast, in cases where system or apparatus claims including the term “processor”
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`were found to invoke Section 112, paragraph 6, courts have explained that the claimed
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`“processor” failed to convey to the person of skill in the art “anything about the internal
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`components, structure, or specific operation of the processor.” See, e. g., GoDaddy. com, LLC v.
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`RPost Commc ’ns Ltd, No. CV-l4-00126—PHX-JAT, 2016 WL 212676, at *56—57 (D. Ariz. Jan.
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`19, 2016) (finding that a “processor” limitation found in system claims invoked application of
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`Section 112, paragraph 6, Where the claims recited a processor for associating two sets of data to
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`generate a third set of data but did not provide additional information regarding how that was
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`accomplished).7 For example, in Velocity Patent LLC v. Mercedes-Benz USA, LLC, Case Nos.
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`13—cv-84l3, l3—cv-8419, 13-cv—8418, 2016 WL 5234110 (N.D. Ill. Sept. 21, 2016), the Court
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`found that limitations in apparatus claims that recited a “processor subsystem” for determining
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`whether to activate a notification circuit required additional programming of the processor that
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`the claim did not provide, thus invoking Section 112, paragraph 6. 2016 WL 5234110, at *6; see
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`also, e.g., Velocity Patent LLC v. FCA US LLC, 2018 WL 4214161, at *8 & n.16 (ND. 111. Sept.
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`4, 2018) (explaining that in cases with “processor” limitations where Section 112, paragraph 6
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`was not implicated, “the claim term describes how the processor performs the function” Whereas,
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`in contrast, the claim term at issue did not describe the input and how the input affected the
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`output, and nor did the specification).8
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`limitation. See Wi-Lan USA, Inc. v. AlcateZ-Lucenr USA, Inc, No. l2-23568-CIV, 2013 WL
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`4811233, at *40-41 (S.D. Fla. Sept. 9, 2013).
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`The GoDaddy Court did not appear to look at the specification in reaching this
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`conclusion. See 2016 WL 212676, at *56.
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`Likewise, in Konami Gaming, Inc. v. High 5 Games, LLC, Case No. 2:14-cv—
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`01483-RFB-NJK, 2018 WL 1020120 (D. Nev. Feb. 22, 2018), the Court found that apparatus
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`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 13 of 17 PageID #: 970
`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 13 of 17 PageID #: 970
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`B.
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`Application to the “With a Processor” Terms
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`The Court now turns to the “with a processor” terms. For the following reasons, it
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`concludes that Defendants have not demonstrated that the terms invoke Section 112, paragraph
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`6, no matter which method of analysis the Court uses to come to that conclusion.
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`As an initial matter, assume that a step-plus-function analysis is the proper analysis that
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`should be applied to the terms (as Plaintiff asserts). In that event, the Court agrees with Plaintiff
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`that Section 112, paragraph 6 would not apply. The claims do not include the phrase “steps for,”
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`and thus there is no presumption that the claim limitations are in step-plus-function format. (D.I.
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`87 at 2; see also D.I. 85 at 17) And the claim limitations recite function (e.g., “calculating .
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`.
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`.
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`second [position] [spatial] coordinates of a second eye view of the [] object [] in three
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`dimensional space”) as well as acts in support of the function (e. g., “using the calculated first
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`position coordinates of the first eye View [and the position of the Virtual object in the
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`Videogame]”). (D.l. 87 at 2; see also D.I. 85 at 16)9 Therefore, under step-plus-function
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`analysis, Section 112, paragraph 6 is not implicated with respect to these claims.
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`and method claims reciting processor limitations invoked Section 112, paragraph 6 where the
`specifications and asserted claims of the patents in-suit failed to disclose an algorithm, and the
`evidence did not establish the existence of off-the-shelf processors that could perform the
`disclosed functions. 2018 WL 1020120, at *13-14. The Court did so without expressly
`addressing Konami’s argument that its method claims must be distinguished from apparatus
`claims in light of the guidance from 0.1. Corp.
`Id. at *11.
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`As the Court noted in the October 18 R&R, “[i]dentifying an act to see [whether
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`Section 112, paragraph 6] applies [] is an inherently less searching inquiry than analyzing the
`same act under .
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`. enablement, written description and definiteness[.]” (D.I. 85 at 15 n.5
`(quoting Neurografix v. Regents of Univ. of Cal. , No. 2:11—cv—07591-MRP—RZ, 2012 WL
`8281409, at *6 (CD. Cal. June 13, 2012»); see also Neurografix, 2012 WL 8281409, at *6
`(finding that the limitation “processing said outputs to generate data representative of the
`diffusion anisotropy of the selected structure” did not implicate Section 112, paragraph 6 and
`explaining that “[t]he central question is not how processing accomplishes the generating
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`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 14 of 17 PageID #: 971
`Case 1:17-cv-00386—CFC-CJB Document 89 Filed 12/07/18 Page 14 of 17 PageID #: 971
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`Alternatively, assume that if method claims recite a structural element that amounts to the
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`point of novelty or meaningfully impacts the scope of the claims, then the method claims can
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`invoke means-plus-function analysis. Even if that were the right rule, the record before the
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`Court, at least as it stands now, does not indicate that the claims at issue are of this sort.
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`During the Markman hearing, Defendants’ counsel did begin her presentation regarding
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`the “with a processor” terms by asserting that the processor elements do meaningfully impact
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`claim scope. Counsel asserted that during prosecution, the original claims simply cited
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`“calculating second position coordinates .
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`. .” Without mention of “with a processor of the
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`videogame system.” (DI. 73 (hereinafter, “Tr.”) at 122) According to Defendants’ counsel, the
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`Examiner rejected the claims under 35 U.S.C. § 101 for “simply being a mathematical step[,]”
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`and in response, the patentee added the phrase “with a processor of the videogame system.” (Id;
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`see also id. at 124 (explaining that to overcome the Section 101 rejection, the patentees asserted
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`that the claims were not just about “math” or “calculating[,]” but now included “a processor
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`which calculates based on these numbers”)) From there, Defendants’ counsel asserted that just
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`adding in the recitation of a “processor” is not enough, and that it must be a “specially
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`programmed processor” that uses an algorithm.
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`(Id. at 124—26)
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`But Defendants did not include this line of argument in their briefing, and so there are no
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`citations to the record that support this position. For now, then, this is simply attorney argument,
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`and the Court cannot conclude—based on attorney argument alone—that the particular processor
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`claimed in the method claims at issue meaningfully alters claim scope (such that the processor
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`terms might be subject to means-plus-function analysis).
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`function, but how generating is accomplished” and “[t]he existence of any answer to the latter,
`recited in the claim language, suffices to hold that [Section 112, paragraph] 6 does not apply”)).
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`Case 1:17-cv-00386-CFC-CJB Document 89 Filed 12/07/18 Page 15 of 17 PageID #: 972
`Case 1:17-cv-00386—CFC-CJB D