In a recent Memorandum Order, Chief Judge Leonard P. Stark adopted Magistrate Judge Christopher J. Burke’s Report and Recommendation (the “Report”) dated June 30, 2016 (D.I. 108), which (i) found the terms “access block” and “media block” (collectively, the “block terms”) not indefinite; and (ii) construed the term “providing, by the media block, a clickable icon.” Triplay, Inc. v. Whatsapp, Inc., C.A. No. 13-1703-LPS-CJB (D. Del. Nov. 15, 2016).
First, Defendant (“Whatsapp”) objected to the Report’s conclusion that the block terms are not indefinite, asserting that the block terms must be construed as means-plus-function terms under § 112, ¶ 6. Id. at 2. Judge Stark disagreed, and adopted the Report’s conclusions that the blocks terms should not be construed as mean-plus-function terms, and that the terms are not indefinite. Specifically, Judge Stark found that the rebuttable presumption that § 112 ¶ 6 does not apply was not overcome. Judge Stark observed that the patents at issue “include significantly more detail defining the block terms at issue in this case than the specification of the patent-in-suit” in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), cited by Whatsapp in support of its position. Id. at 4. Judge Stark further explained that the patents at issue “disclose adequate structure to define the block terms by describing the internal components and operative algorithms associated with the terms, as explained in the Report.” Id. Judge Stark also found that plaintiff’s (“Triplay”) expert report supported “that a person of ordinary skill in the art would understand, with reasonable certainty, the scope of the algorithmic ‘structure’ invoked by the block terms.” Id. at 5. Judge Stark noted that the “functional language describing the operation of the block terms ‘promotes definiteness because it helps bound the scope of the claims by specifying the operations that the [block terms] must undertake.’” Id. at 7.
Second, Triplay objected to the Report’s construction of the term “providing, by the media block, a clickable icon.” Id. Specifically, Triplay raised two objections: “(1) the phrase ‘clickable icon’ should be limited to a ‘link’ rather than a ‘visual representation that is clickable,’ contrary to the construction recommended in the Report, and (2) the Report erred in declining to construe the larger phrase ‘providing … a clickable icon.’” Id. Denying Triplay’s objections, Judge Stark observed that “[t]here is no clear indication in the intrinsic record that the disputed term should take on any other meaning in the context of the” patents at issue. Id. at 8. Judge Stark further noted that while the “specification can – without an express disavowal – direct a person of ordinary skill in the art to a narrower construction than the words [of a claim] would suggest”, through (for example) an implicit disclaimer, the specifications here do not do so.” Id. (citations omitted).