District Court Invalidates Immervision Patent Claim in Suit Against Apple, Citing Single-Means Doctrine

The U.S. District Court for the District of Delaware on Wednesday granted a case-dispositive motion for judgment in favor of Apple Inc., finding the single patent claim asserted by Immervision, Inc., invalid for lack of enablement. In a memorandum opinion, U.S. District Judge Maryellen Noreika adopted a magistrate judge’s report and recommendation that Immervision’s claim was an impermissible “single-means claim,” a seldom-invoked doctrine of patent law. The ruling, which Judge Noreika noted would be case-dispositive, concluding the patent infringement suit that Immervision had brought against Apple.

Immervision asserted clam 21 of its U.S. Patent No. 6,844,990 against Apple, and Apple moved for Judgment on the Pleadings that claim 21 is invalid for lack of enablement. Claim 21 was the only asserted claim and depends on the now-cancelled claim 17. Claim 17 recited a “panoramic objective lens comprising: optical means for projecting a panorama into an image plane of the objective lens,” followed by language describing the function of the optical means. Claim 21 further specified that the lens “compresses the center of the image and the edges of the image, and expands an intermediate zone.” Both parties agreed the claim was drafted in a means-plus-function format, but Apple argued the claim was invalid because it recited only a single “means” for performing a function, rather than a combination of elements as required by 35 U.S.C. § 112, and therefore was not enabled.

Magistrate Judge Burke had previously issued a report and recommendation agreeing with Apple, to which Immervision objected. On a de novo review, Judge Noreika considered Immervision’s three objections that the magistrate judge erred in finding the claim was a single-means claim, that this finding was automatically determinative of enablement, and that Apple’s motion violated procedural briefing limits.

The court addressed Immervision’s failure to comply with the court’s Rule 72 Standing Order, which requires parties to certify whether objections to a magistrate’s report raise new arguments. Immervision’s counsel admitted he “did not bother to look at the Rule 72 Standing Order prior to filing” the objections. Judge Noreika called the failure “inexcusable,” particularly because the magistrate’s report had explicitly directed the parties to the order. The court also found that Immervision had, in fact, made new arguments it had not raised before the magistrate judge, such as its argument that the court must analyze all “facts relating to enablement.” The opinion confirmed this failure to comply served as an “independent ground to overrule Immervision’s objections.” Despite this, the court proceeded to address the merits of Immervision’s objections.

Immervision also argued that the claim was not a single-means claim because the preamble, “a panoramic objective lens,” was limiting. According to Immervision, it placed the claimed “optical means” in combination with implied parts critical to the preamble, such as the lens body and other structures shown in the patent’s figures. However, the court found this argument unpersuasive as the opinion explained that the single-means analysis must focus on the elements the patentee actually claimed, not on unclaimed structure. The court found Immervision’s argument was fatally undermined by its own concession at oral argument that “we only claim one subcomponent of the panoramic objective lens, which is the optical means.” Since the other physical parts of the lens were not part of the claimed combination, the court agreed that Claim 21 recites only a single element.

Furthermore, the court rejected Immervision’s argument that a single-means finding cannot be “determinative” of enablement without a separate, fact-intensive inquiry. Immervision asserted that it was “categorically improper” to ignore an underlying factual dispute. The court disagreed, leaning on the U.S. Court of Appeals for the Federal Circuit’s (CAFC) foundational decision in In re Hyatt. The opinion explained that, under Hyatt, the single-means issue is determinative because such claims are, by their nature, not commensurate in scope with the specification’s disclosure. A single-means claim attempts to cover every conceivable way of achieving a result, while the patent only discloses the limited means known to the inventor. The court quoted the Federal Circuit’s holding that “no provision saves a claim drafted in means-plus-function format which is not drawn to a combination, i.e., a single means claim.” Therefore, the court concluded, a “traditional, fact-intensive enablement inquiry” is not required.

The court dismissed Immervision’s procedural objection that Apple’s motion was an improper attempt to circumvent claim construction briefing limits. Immervision’s counsel contended it was prejudiced and “could have chosen instead to argue the term is not a means plus function term” if the issue had been raised in the Markman briefing. The court found no authority requiring Apple to raise the dispute in its claim construction briefing. Additionally, the opinion also noted that Immervision had conceded in prior litigation that the claim was a means-plus-function claim. It further reasoned that it was not necessary to wait until after claim construction to decide the issue, because Claim 21 was a single-means claim under either party’s proposed construction for the disputed claim terms.

Having rejected all of Immervision’s objections on both procedural and substantive grounds, the court adopted the magistrate judge’s report and recommendation, granted Apple’s motion for judgment on the pleadings, and issued judgment in favor of Apple.