By George Basharis, J.D.
An independent claim and seven dependent claims of a patent for using a "customization module" to give users access to digital content across multiple devices—which was asserted in an infringement suit against Samsung—were invalid as indefinite.
The U.S. Court of Appeals for the Federal Circuit has upheld a district court’s determination that the term "customization module" in a digital rights management (DRM) patent was indefinite and an invalid means-plus-function term because it had no known meaning or structural significance. The challenged patent claims also failed to describe how the customization module operated and lacked any structure corresponding to the claimed function of managing digital content (Grecia v. Samsung Electronics America, Inc., August 20, 2019, Chen, R.).
The owner of U.S. Patent No. 8,533,860 (’860 patent) filed an infringement suit against Samsung Electronics America. The ’860 patent described a method of managing digital content using a computer product, metadata, and a customization module. The ’860 patent described a method of overcoming limitations of traditional DRM systems that did not allow users to access original digital content over multiple devices. However, the patent did not describe how the customization module operated or how it achieved the results described in the patent. Consequently, the district court determined that the term "customization module" was indefinite. The court also determined that the terms "computer product" and "metadata" were indefinite and that the claimed method of using metadata to manage access to digital content was invalid.
On appeal, the court noted that the word "module" was a nonce word that operated as a substitute for the word "means" and created a presumption that the term "customization module" was insufficiently definite. At best, the court explained, "customization module" described the module’s intended functionality. It was a means-plus-function term that was not commonly understood by persons of skill in the art to denote a specific algorithm, definite meaning, or other structure. The term did not have a known meaning or describe how customization was performed or how it operated.
The term also lacked sufficient structure corresponding to the described function of managing digital content across platforms. According to the Federal Circuit, the corresponding structure for a computer-implemented means-plus-function term such as "customization module" is the algorithm disclosed in the specification for performing the function. However, the ’860 patent only described the results of customization without revealing any algorithm for configuring the module to obtain the results described. Because the claimed method of managing digital content was found to be invalid, the court did not consider the lower court’s findings with regards to the terms "computer product" and "metadata."
This case is No. 19-1019.
Attorneys: Matthew Michael Wawrzyn (Wawrzyn & Jarvis LLC) for William Grecia. Michael Hawes (Baker Botts L.L.P.) for Samsung Electronics America, Inc.
Companies: Samsung Electronics America, Inc.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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