Inter-connection among claimed components of a system is not by itself sufficient to avoid the application of § 112, ¶ 6. Here, for example, the claimed “compliance mechanism” was found to invoke application of § 112, ¶ 6 even though the specification describes how the “compliance mechanism” is connected to and interacts with the other components of the system. “Because we apply no such heavy presumption here, and the description of the structure to which [the patentee] points is far less detailed than in Inventio, we do not believe Inventio carries the weight [the patentee] attaches to it.” It may therefore be best to avoid citing or otherwise relying on pre-Williamson means-plus-function precedent, at least precedent between Lighting World and Williamson.
Background / Facts: The patent being asserted here is directed to the prevention of the unauthorized recording of electronic media via a “compliance mechanism,” which diverts incoming media content protected by law or agreement from being output from a system in order to stop illegal copying or sharing. It is not disputed that “compliance mechanism” has no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure.
Issue(s): Whether, like previously held in Inventio, the claims here use the term “compliance mechanism” as a substitute for an electrical circuit, or anything else that might connote a definite structure, and therefore avoid the application of § 112, ¶ 6.
Holding(s): No. “[The patentee] is correct that the Court in Inventio considered how the ‘modernizing device’ was connected to other claimed components of the system. [] But this description alone was not sufficient to avoid the application of § 112, ¶ 6. Rather, it was the specification’s disclosure regarding how the ‘modernizing device’ and its internal components operated as a circuit, which we had recognized in prior cases to connote sufficient structure, that was the basis for this Court’s conclusion that ‘modernizing device’ was not a means-plus-function term. [] In Inventio, moreover, the Court was applying our now-superseded case law, which imposed a heavy presumption against finding a claim term to be in means-plus-function format.”