Means-Plus-Function Claims: Don’t Forget the “Way”

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The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first means-plus-function claim, and because the specification lacked disclosure of a structure for the “way” to perform a second means-plus-function claim. Traxcell Techs., LLC v. Sprint Commc’ns Co., Case Nos. 20-1852, -1854 (Fed. Cir. Oct. 12, 2021) (Prost, J.); Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, Case Nos. 20-1440, -1443 (Fed. Cir. Oct. 12, 2021) (Prost, J.)

Traxcell asserted several related patents against multiple defendants in parallel litigations. One of the patents related to self-optimizing network technology for making “corrective actions” to improve communications between a wireless device and a network (SON patent). The SON patent included two means-plus-function limitations. One of the other patents related to network-based navigation in which the network, as opposed to the wireless device, determined the device’s location (navigation patent).

Traxcell asserted the SON and navigation patents against Verizon and Sprint in one action and the SON patent against Nokia in another. In both cases, the magistrate judge entered a claim construction order construing several common terms of the asserted patents and determining that the claims of the SON patent were indefinite. The lower court adopted the magistrate’s recommendations and subsequently granted summary judgment for all three defendants on each of the patents. Traxcell appealed. The issues on appeal related to infringement and indefiniteness of means-plus-function claims.

First, Traxcell disputed the lower court’s grant of summary judgment for Sprint on the SON patent, arguing that Sprint’s accused technology included a structural equivalent to the disclosed structure under the function-way-result test. The asserted claim required a “means for receiving said performance data and corresponding locations from said tower to correcting radio frequency signals of said radio tower,” the corresponding function of which was “receiving said performance data and corresponding locations from said tower and correcting radio frequency signals of said tower.” The Federal Circuit explained that the disclosed structure of this means-plus-function limitation was a “very detailed” algorithm in the patent. Citing more than two decades of precedent, the Court emphasized that infringement of means-plus-function claims requires proof of three things: That the accused structure performs the (1) identical function, (2) in substantially the same way (3) with substantially the same result, as the disclosed structure. Because Traxcell neglected to even address at least nine steps of the algorithm, i.e., the disclosed structure, with respect to Sprint’s accused system (opting instead to focus on the function and result), the Court affirmed the lower court’s finding of noninfringement.

Second, the lower court found another claim of the SON patent indefinite based on the specification’s failure to disclose the necessary structure for its means-plus-function limitation. Traxcell did not appeal the indefiniteness finding itself, but sought leave to amend the claim to cure the indefiniteness, the denial of which Traxcell raised on appeal. The Federal Circuit explained that a “means-plus-function claim is indefinite if the specification fails to disclose adequate corresponding structure to perform the claimed function,” and thus any amendment to the claim itself would be futile. The Court found that the algorithm that served as the alleged structure with respect to the claim was insufficient because it did not disclose corrective actions based on location data. The Court was not persuaded by Traxcell’s “vague and speculative” arguments that the necessary structure was disclosed based on the specification’s description of how location data might be used—and how other performance data was used—to provide location-based corrective actions. The Court further noted that the specification did not describe how location data was actually used to make corrections. Accordingly, the Court found that the lower court did not abuse its discretion in denying Traxcell leave to amend and affirmed its finding of noninfringement.

The remaining issues were directed to the adopted claim constructions in the SON patent. In the Sprint/Verizon case, the parties stipulated that the term “location” meant a “location that is not merely a position in a grid pattern.” Based on this construction, the lower court found no infringement. On appeal, Traxcell argued that this construction was wrong and that it had preserved the issue by contesting the same construction in the co-pending Nokia case. Unconvinced, the Federal Circuit affirmed the construction based on prosecution disclaimer, where the applicant had explicitly argued that its claimed invention operated “without the limitation of a ‘grid pattern.’”

Traxcell also challenged the lower court’s grant of summary judgment on the SON patent based on the adopted constructions of the terms “first computer” and “computer.” In both instances, the Federal Circuit agreed with the lower court’s determination that these terms required the use of a single computer to perform their corresponding functions and, consequently affirmed the lower court’s finding of noninfringement. With respect to the claims against Sprint, the Court characterized Traxcell’s evidence as “simply too unexplained and too conclusory,” because it merely argued that a single computer could perform the disclosed functions without providing evidence that any single computer in Sprint’s system actually did perform those functions. With respect to its claims against Verizon and Nokia, Traxcell argued that the “single computer” limitations were met because both defendants’ systems contained a user interface through which all disclosed functions were accessible. However, because these user interfaces “do[]n’t perform all the functions [themselves]—rather, [they] collect[] their output from other computers for the convenience of the user,” and other computers actually performed the required functions, permitting such an equivalence “would nullify the single-versus-multiple computer distinction in claim construction.” The Court also held that Traxcell surrendered any multiple-computer equivalents during prosecution.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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