On February 10, 2016, the Federal Circuit issued a nonprecedential opinion in a case captioned Driessen v. Sony Music Entertainment, Best Buy Stores, Fye, & Target Corp. addressing issues related to means-plus-function claims and written description.  While the decision is nonprecedential, it serves as a reminder to provide detailed descriptions of claim terms and to use means-plus-function terms sparingly.

James L. Driessen is the named inventor on U.S. Patent Nos. 7,003,500 ("the '500 patent"), 7,636,695 ("the '695 patent"), and 7,742,993 ("the '993 patent").  Mr. Driessen and his wife sued Sony Music Entertainment, Best Buy Stores, FYE, and Target (collectively "Sony"), alleging infringement of these patents in the U.S. District Court for the District of Utah.  The District Court granted Sony's motions for summary judgment, finding some of the asserted claims of the '500 patent invalid as indefinite, and some of the asserted claims of the '500 patent, all claims of the '695 patent, and all claims of the '993 patent invalid for lack of written description.

All three patents have virtually the same specification and relate to systems and methods of purchasing downloadable content from the Internet.  Rather than purchasing the content directly through the Internet, the buyer goes to a retail store to pay for the item in person.  At the retail store, the buyer obtains a ticket or other "physical medium" proof of sale containing a web address specific to the item sold and a unique password that will enable its download.  The buyer can then anonymously download the media content from any computer with Internet access by going to the web address and inputting the unique password provided.

Indefinite Claims

Claim 1 of the '500 patent, which contains several means-plus-function elements, provides,

1.  A payment system for itemized Internet merchandise or itemized downloadable media material objects, comprising:
    a retail point of sale establishment;
    a customer access point at said retail point of sale establishment;
    URL information that is an Internet transaction location of said itemized Internet merchandise or itemized downloadable media material objects;
    means for accepting payment through an in person transaction with a customer wherein said payment is designated for purchase of said itemized Internet merchandise or itemized downloadable media material objects;
    means for storing and retrieving a record on or in a physical medium corresponding to said URL information that is an Internet transaction location of said itemized Internet merchandise or itemized downloadable media material objects;
    means for transfer of said physical medium from said retail point of sale establishment to said customer; and
    means for Internet transaction authorization on, in, or actuated from said physical medium wherein ownership rights in said itemized Internet merchandise or itemized downloadable media material objects are preselected and transferred to said customer through said transfer of said physical medium.

Primarily at issue in the case is the "means for storing and retrieving a record on or in a physical medium" limitation.  This claim element was construed pursuant to 35 U.S.C. § 112(f), in which the function is identified and then the specification is analyzed to determine what is described as performing the identified function.  The District Court found that the function of this element is "storing and retrieving a record on or in a physical medium".  Specific terms of this element were then construed in which "storing" was construed to mean "both putting into storage and holding in storage," "retrieving" was construed to mean "taking out of storage for the purpose of presenting authentication to prove purchase," "record" was construed to mean a "unique URL corresponding to specific web merchandise or content," and "on or in a physical medium" was construed to mean the location where "the record is stored and from where it may be retrieved."

A means-plus-function claim is indefinite unless structure to perform the function is identified in the specification.  Here, the District Court rejected the Driessens' contention that Figure 5 (a portion of which is reproduced below) -- which depicts an "Admit One" ticket and a floppy disk -- provides the necessary structure to correspond with the above function.

The District Court explained that while Figure 5 perhaps discloses examples of "physical media," it does not disclose a structure that "stor[es] and retriev[es] a record on or in a physical medium."  The disk lacks structure for retrieving any record.  Thus, because the specification failed to disclose any such associated structure for "storing" and "receiving" the record in a physical medium, the claims were held invalid as indefinite.

The Federal Circuit agreed with the District Court, and noted that in the context of storing "a record on or in a physical medium," it is apparent that "store" implies not only maintaining the record in a physical medium, but also getting it there to begin with.  The fact that necessary structures for performing a "means for storing and retrieving a record on or in physical medium" were known in the art does not save the claims.  For means-plus-function claim terms, the inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure.  Accordingly, a bare statement that known techniques or methods can be used does not disclose structure.

Lack of Written Description

A portion of claim 10 of the '500 patent provides:

10.  A method of merchandise transfer on a computer network comprising at least one buyer computer on a network for operation by a user desiring to buy at least one product and at least one selling computer on said network operating for a purpose to sell said product, the method comprising the steps of: . . .
    sending a payment message as a response to said in person transaction either directly or through other computers on said network to said selling computer on said network;
    causing an authorization message to be created on said selling computer in or as a result of said payment message that comprises at least said specification of said product and authentication based on cryptographic key(s), said selling computer being programmed to receive said authorization message for verification of said authentication; . . .

The three terms "selling computer," "payment message," and authorization message," which first appeared when Mr. Driessen added new claims by amendment more than four years after filing the original application that became the '500 patent, also appear in all asserted claims of the '695 and '993 patents.

The District Court found that no written description for "selling computer," "payment message," or "authorization message" is provided anywhere in the specification or original application.  The Driessens argued that the terms were implicitly present in the original application, but the District Court held that the asserted description of "secure web transactions" and "public key infrastructure" in these patents did not necessarily provide for "payment messages" or "authorization messages," let alone require such messages to be sent to or from "selling computers."

The Federal Circuit agreed with the District Court and cautioned that when a patent applicant adds new claims after the original filing date, the new claims must find support in the original specification.  The question becomes whether one of ordinary skill in the art would consider the added claim terms to be supported by the specification as originally filed.

Here, the terms added by amendment of "selling computer," "payment message," and "authorization message" are not present anywhere in the specification or original provisional application.  The fact that the words "payment," "message," "authorization," and "computer" appear individually numerous times in the specification does not provide adequate written description for the terms "selling computer," "payment message," and "authorization message" as defined in the claims.  The Federal Circuit cited LizardTech and noted that the mere presence of these words in isolation does not suffice to show that the "patentee had possession of" the "selling computer," "payment message," and "authorization message" elements of the claimed invention at the time of the application, as 35 U.S.C. § 112(a) requires.

Thus, the Federal Circuit affirmed the District Court's conclusion that such claims are invalid for lack of written description.

This case serves as a lesson for using means-plus-function terms sparingly and carefully, and for having clear support in the specification for all amendments entered during prosecution.  From a point of personal experience, recently, it feels like U.S. patent examiners seemingly have been told to have a heightened scrutiny with respect to section 112 issues requiring very specific support in the specification for all claim terms.  While the requirements in the U.S. Patent Office are not as strict as seen in foreign jurisdictions (e.g., the EPO requires near verbatim or one-to-one use of terminology in the claims as seen in the specification), it does appear that the standards at the U.S. Patent Office have been raised somewhat.

Driessen v. Sony Music Entertainment (Fed. Cir. 2016)
Nonprecedential disposition
Panel: Circuit Judges Dyk, Mayer, and Hughes
Opinion per curiam