Means Plus Function Analysis of Video Game Controller Claims Corrected by Federal Circuit

Case: JVW Enterprises, Inc. v. Interact Accessories, Inc., Case No. 04-1410 (Fed. Cir. 10/3/05)

The One Sentence Summary: In a patent dispute involving video-game controller holders, the district court erred in construing a claim's means-plus-function language in a manner that interpreted functions disclosed in the specification as limitations of the claim.

What They Were Fighting About: JVW owns a patent on an accessory that allows a person playing a video game to operate a video game controller without having to hold the controller using his or her hands. Interact manufactures two products called "racing wheels" which include steering wheels that are used with video games to simulate driving cars. Users sit on the bottom of the products and use one or both hands to steer using the steering wheels which are attached to a rod that rises from the base of the products. Both products allow the user to adjust the height of the steering wheel on the riser column. One of Interact's products uses plastic clips mounted inside a shell that surrounds the steering wheel column. The clips press against opposite sides of the column and engage evenly spaced detents in the column. The shell halves are screwed together to enclose the clips attached to the steering wheel column. The second device also includes a shell joined with screws, but the shell does not encase plastic clips. Instead the shell includes a metal shaft surrounded on each end by a spring-loaded, donut-shaped plate. with teeth. The teeth complement mating projections molded into each side of a steering wheel unit.

JVW sued Interact, alleging that the racing wheels products infringed JVW's patent. The operative claim at issue included a means-plus-function limitation, and claimed a video game controller with horizontal base stabilized by the player's body weight; riser extending upward from the base; and a mounting member for attaching the controller to the riser, "said mounting member including means for lockably receiving a video game controller in fixed position on said mounting member."

The district court first construed, "means for lockably receiving a video game controller in fixed position on said mounting member," as a means-plus-function limitation, and defined the word, "lockably" to mean "attached by a method whereby one can lock a game controller in place for use and can unlock and release the game controller after use." After JVW sought clarification regarding the court's construction of the function of the means-plus-function limitation, and the district court responded by noting that its original construction could be misunderstood as adding unlocking to the function of the means-plus-function limitation, and therefore agreed to rephrase its construction of the term, "lockably" by adopting one of several dictionary definitions: "received in fixed position by the interlacing of fitting of parts into each other."

The district court entered a judgment of non-infringement after a bench trial, finding that the means-plus-function limitation did not read on either of Interact's controller devices. It indicated that the clips used in one model to hold the controller in place in a certain position on the steering wheel column, "might be said to lockably receive a game controller, but they did not receive the controller in a fixed position," since the model achieved the function of receiving the controller in fixed position by other means, that is, by the structure assembled by screwing parts tightly together. The district court found that the second device also did not infringe.

Federal Circuit Holdings:

• Determining infringement involves two steps. First the trial court must construe the claims. Claim construction is an issue of law reviewed de novo. A district court's identification of the function and corresponding structure of a means-plus-function limitation is also reviewed de novo. Second the fact-finder must determine whether the claims, as properly construed, read on the accused device. Infringement is a question of fact reviewed for clear error.
• Construction of a means-plus-function limitation also includes two steps. First the court determines the claimed function. Second, the court identifies the corresponding structure in the written description that performs the function.
• The district court's first construction of the means-plus-function language violated two tenets governing the determination of function in a means-plus-function limitation. First, a court may not construe a means-plus-function limitation, "by adopting a function different from that explicitly recited in the claim." Second, a court errs by importing the functions of a working device into the specific claims, rather than reading the claims for their meaning independent of any working embodiment. The district court adopted the unclaimed functions of, "unlocking" and "releasing" the controller. Those functions are not recited explicitly in the claim but rather relate to a working embodiment disclosed in the patents written description, and thus should not have been considered limitations of the means-plus-function language in the claim.
• The district court's second construction of the means-plus-function language, "received in fixed position by the interlacing of fitting of parts into each other," confused function with structure. Determining a claimed function and identifying structure corresponding to that function involve distinct, albeit related, steps that must occur in a particular order. Function must be determined before corresponding structure can be identified.
• The district court correctly identified the structure in the patent disclosure associated with the "means for lockably receiving a video game controller in fixed position."
• The district court clearly erred in its factual finding that Interact's device using clips did not infringe JVW's patent. The clips perform the identical claimed function of, "receiving and locking a video game controller into a fixed position on the mounting member for use." The fact that the device adds a shell to allow the steering wheel height to be adjusted and a cam mechanism to provide a mechanical way to tighten and loosen the clips does not mean that the clips do not lock the steering wheel in a fixed position. These additional features amount to improvements that do not avoid infringement. Moreover, the means-plus-function limitation need only read on part of the device to infringement. The fact that the controller holders in the patent specification may perform unclaimed functions is irrelevant to the question of whether the claims language reads on the accused device.
• The district court did not err in finding that the second device using donut-shaped plates, did not infringe JVW's patent. The structure used by the second device to accomplish the claimed function was neither identical nor equivalent to the structure of the controller holders shown in the specification of the patent. For instance, the controller holders shown in the patent specifications lock the controller into a fixed position by preventing linear, up and down movement of the steering wheel column. In contrast, the projections on Interact's second device locked the controller into a fixed position by preventing rotational movement of the steering wheel unit on the shaft.