Media Rights Technologies, Inc. v. Capital One Financial Corp.

United States Court of Appeals
for the Federal Circuit
______________________
MEDIA RIGHTS TECHNOLOGIES, INC.,
Plaintiff-Appellant
v.
CAPITAL ONE FINANCIAL CORPORATION,
CAPITAL ONE BANK (USA), N.A.,
CAPITAL ONE, N.A.,
Defendants-Appellees
______________________
2014-1218
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-00476-AJT-
TRJ, Judge Anthony J. Trenga.
______________________
Decided: September 4, 2015
______________________
BYRON LEROY PICKARD, Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for plaintiff-
appellant. Also represented by ROBERT GREENE STERNE,
JONATHAN M. STRANG, JON WRIGHT; DANIEL LUKE GEYSER,
McKool Smith, P.C., Dallas, TX; COURTLAND L.
REICHMAN, Redwood City, CA.
ROBERT A. ANGLE, Troutman Sanders LLP, Richmond,
VA, argued for defendants-appellees. Also represented by
DABNEY JEFFERSON CARR, IV, GEORGE A. SOMERVILLE,
2 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
NICHOLAS RICHARD KLAIBER; DOUGLAS SALYERS, Atlanta,
GA.
______________________
Before O’MALLEY, PLAGER, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.
Media Rights Technologies, Inc. (“Media Rights”) ap-
peals the district court’s decision to grant judgment on the
pleadings that all claims of U.S. Patent No. 7,316,033 (the
“’033 Patent”) are invalid for indefiniteness. Because the
trial court correctly determined that the term “compliance
mechanism,” which is a limitation in every single claim, is
a means-plus-function term that lacks sufficient struc-
ture, we affirm.
BACKGROUND
On April 19, 2013, Media Rights filed suit against
Capital One Financial Corporation; Capital One Bank
(USA), N.A.; and Capital One, N.A. (collectively, “Capital
One”) in the United States District Court for the Eastern
District of Virginia, alleging infringement of the ’033
Patent. The ’033 Patent is entitled “Method of Control-
ling Recording of Media” and is generally directed to
methods, systems, and computer readable media related
to the prevention of unauthorized recording of electronic
media. ’033 Patent, Abstract. Specifically, the ’033
Patent prevents unauthorized recording via a compliance
mechanism, which diverts incoming media content pro-
tected by law or agreement from being output from a
system in order to stop the illegal copying or sharing of
that content.
Claim 1 is illustrative of the invention, and it recites:
A method of preventing unauthorized recording of
electronic media comprising:
MEDIA RIGHTS TECHNOLOGIES v. 3
CAPITAL ONE FINANCIAL CORP.
Activating a compliance mechanism in response to
receiving media content by a client system, said
compliance mechanism coupled to said client sys-
tem, said client system having a media content
presentation application operable thereon and
coupled to said compliance mechanism;
Controlling a data output pathway of said client
system with said compliance mechanism by di-
verting a commonly used data pathway of said
media player application to a controlled data
pathway monitored by said compliance mecha-
nism; and
Directing said media content to a custom media
device coupled to said compliance mechanism via
said data output path, for selectively restricting
output of said media content.
’033 Patent col. 36:19–34 (emphases added).
After the filing of the complaint, the case proceeded
normally and the district court scheduled a Markman
hearing for fall 2013. On the same day it filed its opening
claim construction brief, Capital One also filed a motion
for judgment on the pleadings that the ’033 Patent was
invalid under 35 U.S.C. §§ 101 and 112(b). Because the
motion largely turned on claim construction, the district
court heard argument on the motion for judgment on the
pleadings the same day as the Markman hearing. See
Media Rights Techs., Inc. v. Capital One Fin. Corp., No.
1:13-cv-00476 (Oct. 1, 2013), ECF No. 51.
Upon consideration, the district court issued a deci-
sion, concluding that (1) the terms “compliance mecha-
nism” and “custom media device” are indefinite and, (2)
because every claim of the ’033 Patent contained both
terms, all of the claims of the ’033 Patent, claims 1–27,
are invalid. Media Rights Techs., Inc. v. Capital One Fin.
Corp., No. 1:13-cv-00476, 2013 U.S. Dist. LEXIS 176475,
4 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
at *2 (E.D. Va. Dec. 9, 2013). Specifically, with respect to
the “compliance mechanism” term, the district court first
noted that the parties disputed whether this term was a
means-plus-function term. Id. at *8. Because the term
did not use the word “means,” Media Rights argued that it
was not a means-plus-function term, while Capital One
disagreed. The district court found that the claim lan-
guage itself stated that the “compliance mechanism” was
activated in response to the client system receiving media
content, that it controlled a data output path, and that it
monitored a controlled data pathway. Id. at *10. Because
this language only describes how the components of
invention are combined and the functions performed by
the “compliance mechanism,” without suggesting any-
thing about the structure of the mechanism itself, the
district court determined that the claim language did not
recite sufficient structure for the “compliance mechanism”
term. Id. Thus, the district court concluded that the
‘“compliance mechanism’ must be a means-plus-function
term.” Id. at *10–11.
Having concluded that the term is a means-plus-
function term, the district court next considered what
functions it performs, and then determined what struc-
ture identified in the specification performs these func-
tions. Id. at *11. The district court concluded that
“compliance mechanism” performs four functions:
(1) “controlling a data output of [the] client sys-
tem . . . by diverting a commonly used data
pathway of [the] media player application to a
controlled data pathway” (Claim 1);
(2) monitoring the controlled data pathway
(Claims 1, 10 and 19);
(3) “managing an output path of [the] client sys-
tem . . . by diverting a commonly used data
pathway of [the] media player application to a
controlled data pathway” (Claim 10); and
MEDIA RIGHTS TECHNOLOGIES v. 5
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(4) “stop[ping] or disrupt[ing] the playing of [the]
media content at [the] controlled data pathway
when said playing of said media file content is
outside of [the] usage restriction applicable to
said media file” (Claims 10 and 19).
Id. (quoting ’033 Patent at col. 36-37).
The court found that a term from the written descrip-
tion—the “copyright compliance mechanism 300”—
generally discloses the structure of a “compliance mecha-
nism,” and that “copyright compliance mechanism 300”
includes “one or more coder/decoders, one or more agent
programs, and one or more skins, but not instructions, a
user ID generator, system hooks, a wave shim, or a cus-
tom media device driver.” Id. at *14. The district court
found that this description did not constitute a sufficiently
definite structure. Id. at *18. Specifically, it determined
that, although the structure included various components,
only one—the skins—provided some idea as to how the
compliance mechanism achieves its functions. The dis-
trict court focused on the fact that, while the specification
identified various components of a possible structure,
Media Rights disclaimed that all those components, or
even any specific subsection of them, are necessary to
perform the recited functions. Because the structure for
computer-implemented functions must be an algorithm,
and the specification here failed to describe “an algorithm
whose terms are defined and understandable,” the district
court determined that the “compliance mechanism” term
is indefinite. Id. at *17–18 (quoting Ibormeith IP, LLC v.
Mercedes-Benz USA, LLC, 732 F.3d 1376, 1381 (Fed. Cir.
2013)).
The district court also concluded that the term “cus-
tom media device” is indefinite. Id. at *25. Looking at
the specification, the court noted that it was unclear
whether “custom media device” was hardware or soft-
ware. For example, in one embodiment, the specification
6 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
stated that the device can emulate a custom media device
driver, which is considered hardware, while, in another
embodiment, the “custom media device” is equated to a
custom media device application, i.e. software. Id. at *20–
21. Further complicating matters was the lack of clarity
as to what “custom” means. Id. at *21. At the Markman
hearing, Media Rights attempted to define “custom” as
being specific to the particular media content, and cited to
the specification’s discussion of “custom media player” for
support. The district court found this argument uncon-
vincing, however, explaining that “custom media device”
cannot be equated with “custom media player” because
the player is not required for every embodiment of the
invention, while the “custom media device” is. Id. at *24–
25. Additionally, the district court found that it would be
improper to equate the two because “custom media play-
er” is defined only as an application in the specification,
whereas “custom media device,” according to Media
Rights, also encompasses a driver. Id. at *25. Because
“the bounds of the term ‘custom media device”’ are un-
clear, the district court concluded that the term “custom
media device” is indefinite. Id.
Because these two indefinite terms, “compliance
mechanism” and “custom media device” are included in
every claim, the court concluded that the entire patent is
invalid. Given this conclusion, the district court declined
to reach Capital One’s § 101 argument. Id. at *25–28.
The district court then entered final judgment in favor of
Capital One.
Media Rights timely appealed to this court. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, Media Rights argues that the district court
erred when it determined that both “compliance mecha-
nism” and “custom media device” are invalid for indefi-
niteness. A patent must “conclude with one or more
MEDIA RIGHTS TECHNOLOGIES v. 7
CAPITAL ONE FINANCIAL CORP.
claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as [the]
invention.” 35 U.S.C. § 112, ¶ 2 (2006). 1 A claim fails to
satisfy this statutory requirement and is thus invalid for
indefiniteness if its language, when read in light of the
specification and the prosecution history, “fail[s] to in-
form, with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Notably,
a claim is indefinite if its language “might mean several
different things and no informed and confident choice is
available among the contending definitions.” Id. at 2130
n.8 (quotation omitted). We review the district court’s
indefiniteness determination de novo. See Interval Li-
censing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed Cir.
2014). Because the indefiniteness issue in this case is
intertwined with claim construction, we review any
factual determinations for clear error. See Atmel Corp. v.
Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir.
1999) (“[A] court’s determination of the structure that
corresponds to a particular means-plus function limitation
is indeed a matter of claim construction.”); see also Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 836
(2015).
A. “Compliance Mechanism”
The parties first dispute whether “compliance mecha-
nism” is a means-plus-function term. Means-plus-
function claim limitations, authorized by 35 U.S.C. § 112,
1 Paragraph 2 and Paragraph 6 of 35 U.S.C. § 112
were replaced by § 112(b) and § 112(f) respectively when
the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
112-29, 125 Stat. 284 (2011) took effect on September 16,
2012. Because the application resulting in the asserted
patent was filed before that date, we refer to the pre-AIA
version of § 112.
8 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
¶ 6, allow a patentee to draft claim terms “as a means or
step for performing a specified function without the
recital of structure, material, or acts in support thereof.”
35 U.S.C. § 112, ¶ 6. But this flexibility in claim drafting
comes at a price. Such claims are construed to cover only
“the structure, materials, or acts described in the specifi-
cation as corresponding to the claimed function and
equivalents thereof.” Williamson v. Citrix Online, LLC, _
F.3d _, No. 2013-1130, 2015 U.S. App. LEXIS 10082, at
*15 (Fed. Cir. June 16, 2015).
“It is well settled that [a] claim limitation that actual-
ly uses the word ‘means’ invokes a rebuttable presump-
tion that § 112, [¶] 6 applies.” Apex Inc. v. Raritan
Comput., Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003) (quo-
tation omitted). And, it is equally understood that “a
claim term that does not use ‘means’ will trigger the
rebuttable presumption that § 112, [¶] 6 does not apply.”
Id. at 1371 (quotation omitted). But this presumption
against the application of § 112, ¶ 6 to a claim term
lacking the word “means” can be overcome if a party can
“demonstrate[] that the claim term fails to ‘recite suffi-
ciently definite structure’ or else recites ‘function without
reciting sufficient structure for performing that function.’”
Williamson, 2015 U.S. App. LEXIS 10082, at *19 (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
“In undertaking this analysis, we ask if the claim lan-
guage, read in light of the specification, recites sufficiently
definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC
v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014)
(citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp.,
649 F.3d 1350, 1357 (Fed. Cir. 2011)).
In this case, there is no dispute that the term “com-
pliance mechanism” does not include the word “means.”
The parties also agree that the claim language recites
functions for the “compliance mechanism” term. But, the
parties dispute whether the claims, read in light of the
specification, only “recite function without reciting suffi-
MEDIA RIGHTS TECHNOLOGIES v. 9
CAPITAL ONE FINANCIAL CORP.
cient structure for performing that function.” Williamson,
2015 U.S. App. LEXIS 10082, at *19. 2
Media Rights does not dispute that “compliance
mechanism” has no commonly understood meaning and is
not generally viewed by one skilled in the art to connote a
particular structure. To prevent the application of § 112,
¶ 6, Media Rights analogizes the “compliance mechanism”
term to the “modernizing device” term described in Inven-
tio, which we held was not a means-plus-function term
based on extensive structural description in the specifica-
tion. 649 F.3d at 1357–59. In Inventio, we found that the
term “modernizing device”—not a commonly understood
term—was used to describe an electrical circuit, which we
found connotes sufficient structure when coupled with a
detailed description of the circuit’s operation. Id. at 1358
(citing Mass. Inst. of Tech. v. Abacus Software, 462 F.3d
1344, 1355–56 (Fed. Cir. 2006)). Because “the claims
indicate[d] that ‘modernizing device’ functions as an
electrical circuit that receives signals, processes signals,
and outputs signals to other components” and the specifi-
cation “depict[ed] the modernizing device and its internal
components,” “show[ed] how the elements were connected
together,” and further described how these components
2 Media Rights also argues that the district court
erred in its analysis because it failed to consider the claim
language in light of the specification when determining
that “compliance mechanism” was a means-plus-function
term. Media Rights is correct that the district court
should have considered the entire intrinsic record when
assessing whether “compliance mechanism” invokes
§ 112, ¶ 6. But, as discussed below, because the specifica-
tion does not recite any identifiable structure for the
“compliance mechanism” term, the district court’s failure
to consider the intrinsic record at that initial stage was
harmless.
10 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
perform the claimed functions, we concluded that “mod-
ernizing device” was not a means-plus-function limitation.
Id. at 1358–59.
Here, unlike Inventio, the claims do not use the term
“compliance mechanism” as a substitute for an electrical
circuit, or anything else that might connote a definite
structure. Rather, the claims simply state that the “com-
pliance mechanism” can perform various functions. A
review of the intrinsic record does not change this conclu-
sion. The written description only depicts and describes
how what is referred to as the “copyright compliance
mechanism” is connected to various parts of the system,
how the “copyright compliance mechanism” functions, and
the potential—though not mandatory—functional compo-
nents of the “copyright compliance mechanism.” See ’033
Patent col. 18:57–col. 19:5; col. 20:32–49; Fig. 3; Fig. 5B.
None of these passages, however, define “compliance
mechanism” in specific structural terms. And, the addi-
tion of the term “copyright compliance mechanism” in the
specification only confuses the issue further. Media
Rights does not contend that “copyright compliance mech-
anism” is the equivalent of the electrical circuit detailed
in the written description at issue in Inventio. Indeed,
Media Rights asserts that the “copyright compliance
mechanism”—the only “compliance mechanism” refer-
enced outside the claims and the summary of the inven-
tion, and the only one depicted in the figures to which it
points—is narrower than the structure it claims as the
“compliance mechanism.” Without more, we cannot find
that the claims, when read in light of the specification,
provide sufficient structure for the “compliance mecha-
nism” term.
Media Rights attempts to avoid this conclusion by ar-
guing that the specification recits sufficient structure
under Inventio because it describes how the “compliance
mechanism” is connected to and interacts with the other
components of the system, what processes the “compliance
MEDIA RIGHTS TECHNOLOGIES v. 11
CAPITAL ONE FINANCIAL CORP.
mechanism” performs, and what structural subcompo-
nents might comprise the “compliance mechanism.” We
disagree. Media Rights is correct that the Court in Inven-
tio considered how the “modernizing device” was connect-
ed to other claimed components of the system. Id. at
1358. 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 suffi-
cient structure, that was the basis for this Court’s conclu-
sion that “modernizing device” was not a means-plus-
function term. Id. at 1358–59. 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. Id. at 1356
(noting that “the presumption flowing from the absence of
the term ‘means’ is a strong one that is not readily over-
come”). Because we apply no such heavy presumption
here, and the description of the structure to which Media
Rights points is far less detailed than in Inventio, we do
not believe Inventio carries the weight Media Rights
attaches to it.
We have never found that the term “mechanism”—
without more—connotes an identifiable structure; certain-
ly, merely adding the modifier “compliance” to that term
would not do so either. See Mass. Inst. of Tech, 462 F.3d
at 1354 (explaining that “[t]he term ‘mechanism’ standing
alone connotes no more structure than the terms ‘means,’”
and thus, the Court should consider whether the adjec-
tival modifier carries a generally understood structural
meaning in the art). Nothing in the written description of
the ’033 Patent adds sufficiently to the meaning of the
term’s structure; it only describes the term’s function and
interaction with other parts in the system. See ’033
Patent col. 3:41–43 (noting that Fig. 3 depicts a diagram
of various functional components of a copyright compli-
12 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
ance mechanism); col. 8:32–63 (describing the functions of
the copyright compliance mechanism’s components); col.
13:20–55 (detailing the use of custom media device driv-
ers in a copyright compliance mechanism that receives a
media file); col. 21:14–46 (explaining that Fig. 5B illus-
trates the computer system used to implement the inven-
tion, wherein the copyright compliance mechanism is
coupled to playback application and the wave shim driv-
er). This disclosure fails to provide sufficient structure for
“compliance mechanism.” See Robert Bosch, 769 F.3d at
1099–1100 (finding that the specification’s description of
how the “program recognition device” connects and func-
tions with various components was insufficient to provide
structure to the “program recognition device” term).
Accordingly, we find that the district court was correct to
conclude “compliance mechanism” is a means-plus-
function limitation.
Because “compliance mechanism” is a means-plus-
function term, we now must “attempt to construe the
disputed claim term by identifying the ‘corresponding
structure, material, or acts described in the specification’
to which the claim term will be limited.” Id. at 1097
(quoting Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090,
1097 (Fed. Cir. 2008)). Where there are multiple claimed
functions, as there are in this case, the patentee must
disclose adequate corresponding structure to perform all
of the claimed functions. Noah Sys., Inc. v. Intuit Inc.,
675 F.3d 1302, 1318–19 (Fed. Cir. 2012) (“[W]here a
disclosed algorithm supports some, but not all, of the
functions associated with a means-plus-function limita-
tion, we treat the specification as if no algorithm has been
disclosed at all. In such instances, we are not faced with
a disclosure which addresses itself to an identifiable
function, but arguably does so inadequately.”). “If we are
unable to identify any ‘corresponding structure, material,
or acts described in the specification,’ the claim term is
indefinite.” Robert Bosch, 769 F.3d at 1097 (quoting Noah
MEDIA RIGHTS TECHNOLOGIES v. 13
CAPITAL ONE FINANCIAL CORP.
Sys., 675 F.3d at 1312); see also EON Corp. IP Holdings,
LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir.
2015) (“Means-plus-function claim limitations un-
der § 112 ¶ 6 must satisfy the definiteness requirement
of § 112 ¶ 2.”).
Here, the parties agree that the “compliance mecha-
nism” performs four functions: controlling data output by
diverting a data pathway; monitoring the controlled data
pathway; managing an output path by diverting a data
pathway; and stopping the play of media content. See
Media Rights, 2013 U.S. Dist. LEXIS 176475, at *11. The
question is whether the specification discloses adequate
structure to achieve all four of the claimed functions. See
Noah Sys., 675 F.3d at 1311 (“Even if the specification
discloses a ‘corresponding structure,’ the disclosure must
be adequate; the patent’s specification must provide ‘an
adequate disclosure showing what is meant by that
[claim] language.’” (quoting In re Donaldson Co., 16 F.3d
1189, 1195 (Fed. Cir. 1994))). Because these functions are
computer-implemented functions, moreover, the structure
disclosed in the specification must be more than a general
purpose computer or microprocessor. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333
(Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339 (Fed. Cir. 1999)). Instead, we re-
quire that the specification disclose an algorithm for
performing the claimed function. See Net MoneyIN, Inc.
v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
The algorithm may be expressed as a mathematical
formula, in prose, as a flow chart, or in any other manner
that provides sufficient structure. Noah, 675 F.3d at 1312
(citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1340 (Fed. Cir. 2008)).
Here, the specification fails to disclose an operative
algorithm for both the “controlling data output” and
“managing output path” functions. These two functions
both require diverting a data pathway. Media Rights
14 MEDIA RIGHTS TECHNOLOGIES v.
CAPITAL ONE FINANCIAL CORP.
argues that the specification discloses an algorithm for
performing this diversion at col. 11:37–12:20, with its
recitation of C++ source code that can be implemented to
perform the function. To determine if this disclosure of
software code is sufficient, the Court in this case “needs
expert witness testimony to determine what that source
code discloses at an algorithmic level,” as Media Rights
conceded at oral argument. Oral Arg. at 14:40–47, avail-
able at http://oralarguments.cafc.uscourts.gov/default
.aspx?fl=2014-1218.mp3. Here, there is unrebutted
expert testimony that this code only returns various error
messages. The cited algorithm does not, accordingly,
explain how to perform the diverting function, making the
disclosure inadequate. See Typhoon Touch Techs., Inc. v.
Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (“[T]he
patent need only disclose sufficient structure for a person
of skill in the field to provide an operative software pro-
gram for the specified function.”). Because it fails to
disclose any other algorithm that performs the diversion
function, the specification of the ’033 Patent fails to
disclose sufficient structure for the “compliance mecha-
nism” term.
Additionally, the specification does not disclose suffi-
cient structure for the “monitoring” function. Media
Rights alleges that the specification discloses a set of
rules at col. 18:33–48, which the “copyright compliance
mechanism” applies to monitor the data pathway to
ensure there is no unauthorized recording of electronic
media. But, this cited portion of the specification provides
no detail about the rules themselves or how the “copyright
compliance mechanism” determines whether the rules are
being enforced. ’033 Patent col. 18:38–41 (explaining that
the copyright compliance mechanism will review a portion
of a media file in order to verify that the rules are en-
forced); col. 18:42–44 (explaining that this process will
continue “until the media file’s contents have been pre-
sented in their entirety”). In the absence of any further
MEDIA RIGHTS TECHNOLOGIES v. 15
CAPITAL ONE FINANCIAL CORP.
disclosure, we also find that the specification fails to
disclose sufficient structure for the “monitoring” function.
Accordingly, the district court did not err when it deter-
mined that this term is indefinite. 3
CONCLUSION
Here, the district court properly determined that
“compliance mechanism” is a means-plus-function term,
and that the specification fails to adequately disclose the
structure to perform all four of its functions. We agree
with the district court that this fact renders all claims in
the ’033 Patent indefinite. Accordingly, we affirm the
district court’s grant of judgment of invalidity as to claims
1–27 of ’033 Patent.
AFFIRMED
3 Because we affirm the district court’s decision
that the “compliance mechanism” limitation is indefinite,
we need not reach Media Rights’s additional argument
that the “custom media device” term is not indefinite. See
Orion Tech., Inc. v. United States, 704 F.3d 1344, 1350
(Fed. Cir. 2013) (“An appellate court can affirm a decision
of the trial court upon any ground supported by the
record.”) (citing Datascope Corp. v. SMEC, Inc., 879 F.2d
820, 822 n.1 (Fed. Cir. 1989)). Additionally, we need not
reach Capital One’s alternative argument that the district
court’s invalidity decision also can be affirmed on 35
U.S.C. § 101 grounds. As Capital One itself acknowledg-
es, “the district court did not address [its] motion for
judgment on the pleadings under § 101.” Appellees’ Br. at
2. We decline to do so in the first instance.