‘Processor’ and ‘Storage’ Interpreted Broadly and Not Means-Plus-Function Element

Intellectual Property Law

In VDPP LLC v. Vizio, Inc.,1 the Federal Circuit held that the claim terms “processor” and “storage” were not considered to be drafted in means-plus-function format and, therefore, were not subject to interpretation under 35 U.S.C. § 112(f).

VDPP owned U.S. Patent Nos. 9,699,444 (the ’444 patent), 9,948,922 (the ’922 patent) and 10,021,380 (the ’380 patent). The patents generated an illusion of continuous movement, repeatedly displaying at least two substantially comparable images and a third different bridging picture. The images seem to have seamless and constant directional movement.

The case focused on whether the claim language “processor” and “storage” should be considered means-plus-function elements under 35 U.S.C. § 112(f).

Claim 1 of the ’444 patent was representative and recited the following:

1. An apparatus comprising:

a storage adapted to:

     store one or more image frames; and

a processor adapted to:

     obtain a first image frame from a first video stream;

     expand the first image frame to generate a modified image frame, wherein the modified image
     frame is different from the first imageframe;

     generate a bridge frame, wherein the bridge frame is a non-solid color, wherein the bridge frame is
     different from the first image frame and different from the modified image frame;

     blend the modified image frame with the bridge frame to generate a blended modified image frame;
     and display the blended modified image frame.

VDPP sued Vizio Inc., asserting that Vizio’s “P-series” television sets infringed claims 1 and 27 of the ’444 patent, claim 2 of the ’922 patent and claim 6 of the ’380 patent. Vizio countered that the patents were invalid, arguing that the claim elements “storage” and “processor” were drafted in means-plus-function format under Section 112(f), and the specifications of the patents did not disclose structures corresponding to those functions.

The district court determined that the elements “processor” and “storage” should be interpreted under Section 112(f) because the specification and claims did not describe how to perform the recited functions. As a result, the district court held that the claims were indefinite.

VDPP appealed, and the Federal Circuit reversed. Section 112(f) states that a patent applicant may draft a claim element in means-plus-function format without the recital of structure in the claim. The claim, however, is interpreted to cover only “the corresponding structure . . . described in the specification and equivalents thereof.”2

Interpreting claims under Section 112(f) involves two steps.3 At step one, it is determined whether the claim language falls under Section 112(f). If a claim limitation does not use the word “means,” it is presumed to not be subject to Section 112(f). To overcome the presumption, the claim limitation must be shown to not recite sufficiently definite structure.

The main inquiry, however, is not simply the presence or absence of the word “means,” but whether the skilled artisan would recognize the claim limitation to have a satisfactorily definite meaning as the name for structure. If the claim language fails to state adequately definite structure, Section 112(f) applies and step two of the analysis is considered. At step two, the specification is analyzed to determine whether it describes structure that corresponds to the function recited in the claim.4

VDPP asserted on appeal that the district court incorrectly determined that the claim  language “processor” and “storage” was required to be interpreted under Section 112(f). VDPP contended that since the claim limitations did not use the word “means,” there was a rebuttable presumption that they were not written in means-plus-function format. Vizio countered that the “processor” and “storage” elements were subject to Section 112(f) because they were just nonce words.

The Federal Circuit agreed with VDPP that the district court incorrectly determined that the “processor” and “storage” elements were subject to Section 112(f). The court noted that the district court did not give effect to the presumption against use of Section 112(f).5 The court explained that to overcome this presumption, Vizio had to submit some evidence that a person of ordinary skill would not have understood the claim language to represent or describe sufficiently definite structure. In addition, it found the district court disregarded intrinsic evidence that the terms “processor” and “storage” do signify structure to one of ordinary skill. For example, the specifications described that “processors” and “storage” were “well-known,” the appeals court said.6

Accordingly, since Vizio failed to provide any evidence to overcome the presumption against use of Section 112(f), the Federal Circuit held the district court erred in holding that the claim language should be interpreted as means-plus-function elements under Section 112(f). The Federal Circuit also noted that since step one indicated Section 112(f) did not apply to the “processor” and “storage” limitations elements, step two, which asks whether the specification adequately discloses structures for those functions, need not be analyzed.7

Vizio argued that since the limitations “processor” and “storage” fundamentally connote function, they were manifestly subject to Section 112(f). The court disagreed, saying, “[T]he mere fact that the disputed limitations incorporate functional language does not automatically convert [them] into means for performing such functions.”8

The court explained that just because “the disputed limitations incorporate functional language—‘processing’ and ‘storing’—that does not necessarily render them subject to § 112(f).”9 Accordingly, the court reversed the district court’s determination that the claims at issue were invalid as indefinite.

Lessons:

Patent applicants and owners are on notice that claims that recite functional features can create uncertainty about how that language may be interpreted. In this case, defendant Vizio tried unsuccessfully to invalidate the claims by asserting the claims should be interpreted as means-plus-function format because of the functional language. Vizio was successful at the district court, but the Federal Circuit ultimately reversed. The litigation continues as the Federal Circuit remanded the case to the district court to deal with other issues of the case.

Thus, patent applicants are encouraged to describe technical details—for example, processor functions for software-implemented inventions. In addition, patent specifications should preferably describe software design/architecture and software functionality associated at least with the inventive features and functionality that one of ordinary skill would consider important in understanding the invention. Patent applicants should also include a variety of claims, including method, software system and means-plus-function claims that can be used as leverage for claim interpretation issues.


Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.


1 VDPP LLC v. Vizio, Inc., No. 2021-2040, 2022 WL 885771, 2022 USPQ2d 281 (Fed. Cir. March 25, 2022) (unpublished).

2 35 U.S.C. § 112(f).

3 VDPP, slip op. at 2 (citing Dyfan, LLC v. Target Corp., No. 28 F.4th 1360, 2022 USPQ2d 288 (Fed. Cir. 2022)).

4 Id., slip op. at 3 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351, 115 USPQ2d 1105, 1113 (Fed. Cir. 2015)).

5 Id., slip op. at 3.

6 Id., slip op. at 3.

7 Id., slip op. at 4.

8 Id., slip op. at 4 (quoting Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008, 126 USPQ2d 1765, 1768 (Fed. Cir. 2018)).

9 Id., slip op. at 4.

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