Media Rights Technologies, Inc. v. Capital One Financial Corp.
800 F.3d 1366
Fed. Cir.2015Background
- Media Rights sued Capital One for infringing U.S. Patent No. 7,316,033, which claims methods/systems to prevent unauthorized recording of electronic media by diverting output through a “compliance mechanism” to a “custom media device.”
- Claim 1 recites a client-activated “compliance mechanism” that diverts a media player's data pathway to a controlled pathway and directs content to a custom media device to restrict output.
- Capital One moved for judgment on the pleadings, arguing the patent was invalid under 35 U.S.C. §§ 101 and 112(b); the district court held a Markman hearing and treated the motion largely as claim construction.
- The district court found both “compliance mechanism” and “custom media device” indefinite; because those terms appear in every claim, it invalidated claims 1–27 and entered judgment for Capital One.
- On appeal, the Federal Circuit affirmed, holding “compliance mechanism” is a means-plus-function term under § 112 ¶ 6 and that the specification fails to disclose adequate corresponding structure (notably no operative algorithm) for all claimed functions, rendering the claims indefinite.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether “compliance mechanism” invokes § 112 ¶ 6 (means-plus-function) | Media Rights: absence of the word “means” and specification descriptions suffice to show structure (analogous to Inventio) | Capital One: term is functional, lacks structural meaning and thus triggers § 112 ¶ 6 | Court: term lacks definite structure; § 112 ¶ 6 applies |
| Whether the specification discloses corresponding structure for all claimed functions | Media Rights: specification and C++ code disclose structure/algorithm for diversion, monitoring, and stopping playback | Capital One: disclosure is insufficient; code only returns errors and rules lack detail—no operative algorithm | Court: specification fails to disclose adequate algorithms for diverting pathways and monitoring; corresponding structure absent |
| Whether indefiniteness of one claim term requires invalidation of all claims | Media Rights: other term (“custom media device”) argued separately | Capital One: both critical terms present in every claim | Court: because “compliance mechanism” is in every claim and indefinite, all claims 1–27 invalid; no need to decide custom media device |
| Whether court should address § 101 challenge | Media Rights: urged the court to avoid § 101 by resolving § 112 issue | Capital One: preserved § 101 argument below but district court did not decide it | Court: declined to reach § 101; affirmed on § 112 ground |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (definiteness standard: claims must inform with reasonable certainty)
- Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350 (Fed. Cir. 2011) (example where a novel term was found to connote structure due to detailed circuit description)
- Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014) (requirement that claim language, read with specification, recite sufficiently definite structure)
- Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012) (means-plus-function requires disclosure of structure for all claimed functions; partial disclosure is inadequate)
- Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) (software-implemented functions require disclosure of an algorithm, not merely a general-purpose computer)