United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC. AND NEXT SOFTWARE, INC.
`(formerly known as NeXT Computer, Inc.),
`Plaintiffs-Appellants,
`
`v.
`
`MOTOROLA, INC. (now known as Motorola Solu-
`tions, Inc.) AND MOTOROLA MOBILITY, INC.,
`Defendants-Cross Appellants.
`______________________
`
`2012-1548, -1549
`______________________
`
`Appeals from the United States District Court for the
`Northern District of Illinois in No. 11-CV-8540, Circuit
`Judge Richard A. Posner.
`______________________
`
`Decided: April 25, 2014
`______________________
`
`
`E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-
`cliffe LLP, of New York, New York, argued for plaintiffs-
`ppellants. With him on the brief were MARK S. DAVIES,
`RACHEL M. MCKENZIE and T. VANN PEARCE, JR. of Wash-
`ington, DC; and MATTHEW D. POWERS, Tensegrity Law
`Group LLP, of Redwood Shores, California. Of counsel
`was KATHERINE M. KOPP, Orrick, Herrington & Sutcliffe
`LLP, of Washington, DC.
`
`
`

`
`2
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`DAVID A. NELSON, Quinn Emanuel Urquhart & Sulli-
`van, LLP, argued for defendants-cross appellants. With
`him on the brief were STEPHEN A. SWEDLOW; BRIAN C.
`CANNON, of Redwood Shores, California; KATHLEEN M.
`SULLIVAN and EDWARD J. DEFRANCO, of New York, New
`York; and CHARLES K. VERHOEVEN, of San Francisco,
`California. Of counsel were RAYMOND N. NIMROD and
`DAVID ELIHU, of New York, New York; and AMANDA SCOTT
`WILLIAMSON, of Chicago, Illinois.
`
`JOEL DAVIDOW, Cuneo, Gilbert & LaDuca, LLP, of
`Washington, DC, for amicus curiae The American Anti-
`trust Institute. With him on the brief was ROBERT J.
`CYNKAR.
`
`CHARLES W. SHIFLEY, Banner & Witcoff, Ltd., of Chi-
`cago, Illinois, for amicus curiae The Intellectual Property
`Law Association of Chicago.
`
`DEBRA J. MCCOMAS, Haynes and Boone, LLP, of Dal-
`las, Texas, for amici curiae Altera Corporation, et al.
`With her on the brief was DAVID L. MCCOMBS. Of counsel
`on the brief were MARTA BECKWITH, Cisco Systems, Inc.,
`of San Jose, California; ELIZABETH LAUNER, Logitech Inc.,
`of Newark, California; and RICHARD J. LUTTON, JR., Nest
`Labs, Inc., of Palo Alto, California.
`
`RICHARD M. BRUNELL, Senior Advisor for competition
`matters, United States Federal Trade Commission, of
`Washington, DC, for amicus curiae United States Federal
`Trade Commission. With him on the brief were DAVID C.
`SHONKA, Acting General Counsel, WILLIAM COHEN, Depu-
`ty General Counsel, WILLIAM F. ADKINSON, JR., Attorney
`and SUZANNE MUNCK af ROSENCHOLD, Chief Counsel for
`Intellectual Property.
`
`PETER M. LANCASTER, Dorsey & Whitney LLP, of
`Minneapolis, Minnesota, for amicus curiae The Institute
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`3
`
`of Electrical and Electronics Engineers, Incorporated.
`With him on the brief were MICHAEL A. LINDSAY, of Min-
`neapolis, Minnesota, and EILEEN M. LACH, General Coun-
`sel and Chief Compliance Officer IEEE, of New York, New
`York.
`
`PAUL D. CLEMENT, Brancroft PLLC, of Washington,
`DC, for amici curiae Verizon Communications Inc., et al.
`With him on the brief was D. ZACHARY HUDSON.
`
`TINA M. CHAPPELL, Director of Intellectual Property
`Policy, Intel Corporation, of Chandler, Arizona, for amicus
`curiae Intel Corporation. With her on the brief were
`THOMAS G. HUNGER and MATTHEW D. MCGILL, Gibson,
`Dunn & Crutcher LLP, of Washington, DC.
`
`RICHARD S. TAFFET, Bingham McCutchen LLP, of New
`York, New York, for amicus curiae Qualcomm Incorpo-
`rated. With him on the brief were PATRICK STRAWBRIDGE,
`of Boston, Massachusetts and DAVID B. SALMONS, of
`Washington, DC.
`
`BRIAN R. MATSUI, Morrison & Foerster LLP, of Wash-
`ington, DC, for amicus curiae Law Professors Thomas F.
`Cotter, et al. With him on the brief was NATALIE R. RAM.
`
`ROY T. ENGLERT, JR., Robbins, Russell, Englert, Or-
`seck, Untereiner & Sauber LLP, of Washington, DC, for
`amicus curiae, BSA │The Software Alliance.
`
`PATRICK J. FLINN, Alston and Bird LLP, of Atlanta,
`Georgia, for amici curiae Nokia Corporation, et al. With
`him on the brief was KEITH E. BROYLES.
`
`BRIAN C. RIOPELLE, McGuire Woods LLP, of Rich-
`mond, Virginia, for amicus curiae Research in Motion
`Limited. With him on the brief were ROBERT M. TYLER
`and KRISTEN M. CALLEJA.
`
`

`
`4
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`
`CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of
`Chicago, Illinois, for amicus curiae Microsoft Corporation.
`With him on the brief were RICHARD A. CEDEROTH and
`NATHANIEL C. LOVE. Of counsel on the brief were T.
`ANDREW CULBERT and DAVID E. KILLOUGH, Microsoft
`Corporation, of Redmond, West Virginia.
`______________________
`
`Before RADER, Chief Judge, PROST and REYNA, Circuit
`Judges.
`Opinion for the court filed by Circuit Judge REYNA.
`Opinion dissenting in part filed by Chief Judge
`RADER.
`Opinion concurring in part and dissenting in part
`filed by Circuit Judge PROST.
`REYNA, Circuit Judge
`Plaintiffs Apple Inc. and Next Software, Inc. (“Apple”)
`filed a complaint against Defendants Motorola, Inc. and
`Motorola Mobility, Inc. (“Motorola”) on October 29, 2010
`in the United States District Court for the Western Dis-
`trict of Wisconsin, asserting infringement of three pa-
`tents. Motorola counterclaimed, asserting six of its own
`patents. Apple amended its complaint to include an
`additional twelve patents. Both parties also sought
`declaratory judgments of non-infringement and invalidity.
`After claim construction began in Wisconsin, the case
`was transferred to the United States District Court for
`the Northern District of Illinois, Judge Posner sitting by
`designation. The district court in Illinois completed claim
`construction. Based upon its claim construction decisions,
`the court granted summary judgment of non-infringement
`with respect to certain claims and excluded the vast
`majority of both parties’ damages expert evidence for the
`remaining claims. With little expert evidence deemed
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`5
`
`admissible, the court granted summary judgment that
`neither side was entitled to any damages or an injunction.
`Despite infringement being assumed, the district court
`dismissed all claims with prejudice before trial.
`Only six patents are at issue on appeal: Apple’s U.S.
`Patent Nos. 7,479,949; 6,343,263; and 5,946,647; and
`Motorola’s U.S. Patent Nos. 6,359,898; 6,175,559; and
`5,319,712. The parties contest the district court’s claim
`construction, admissibility, damages, and
`injunction
`decisions. As detailed below, we affirm the district court’s
`claim construction decisions, with the exception of its
`construction of Apple’s ’949 patent. With a minor excep-
`tion, the district court’s decision to exclude the damages
`evidence presented by both Apple and Motorola is re-
`versed. We also reverse the district court’s grant of
`summary judgment of no damages for infringement of
`Apple’s patents. Based upon our reversal of the district
`court’s claim construction of the ’949 patent, we vacate
`the court’s grant of summary judgment regarding Apple’s
`request for an injunction. The court’s decision that
`Motorola is not entitled to an injunction for infringement
`of the FRAND-committed ’898 patent is affirmed. We
`address these, and all related issues, in turn.
`CLAIM CONSTRUCTION
`The parties raise claim construction issues regarding
`Apple’s ’949, ’263, and ’647 patents and Motorola’s ’559
`and ’712 patents. Claim construction is a question of law
`that we review de novo. Cybor Corp. v. FAS Techs., Inc.,
`138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc).
`Apple’s ’949 patent
`The district court construed claims 1, 2, 9, and 10 of
`the ’949 patent and, based upon its construction, granted
`Motorola’s motion
`for summary
`judgment of non-
`infringement for the majority of the accused products.
`Because the district court mistakenly construed certain
`
`

`
`6
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`limitations as means-plus-function limitations, we reverse
`its claim construction and vacate the subsequent sum-
`mary judgment decision.
`The ’949 patent discloses the use of finger contacts to
`control a touchscreen computer. Claims 1, 2, 9, and 10 of
`the ’949 patent are recited below, with the limitations at
`issue emphasized. Claim 1 recites:
`A computing device, comprising: a touch screen
`display; one or more processors; memory; and one
`or more programs,
`wherein the one or more programs are stored in
`the memory and configured to be executed by the
`one or more processors, the one or more programs
`including:
`instructions for detecting one or more finger con-
`tacts with the touch screen display;
`instructions for applying one or more heuristics to
`the one or more finger contacts to determine a
`command for the device; and
`instructions for processing the command;
`wherein the one or more heuristics comprise:
`a vertical screen scrolling heuristic for determin-
`ing that the one or more finger contacts corre-
`spond to a one-dimensional vertical screen
`scrolling command rather than a two-dimensional
`screen translation command based on an angle of
`initial movement of a finger contact with respect to
`the touch screen display;
`a two-dimensional screen translation heuristic for
`determining that the one or more finger contacts
`correspond to the two-dimensional screen transla-
`tion command rather than the one-dimensional
`vertical screen scrolling command based on the
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`7
`
`angle of initial movement of the finger contact with
`respect to the touch screen display; and
`a next item heuristic for determining that the one
`or more finger contacts correspond to a command
`to transition from displaying a respective item in
`a set of items to displaying a next item in the set
`of items.
`’949 patent at col. 122 l. 37 - col. 123 l. 2 (emphases add-
`ed). Claim 2 recites:
`The computing device of claim 1, wherein the one
`or more heuristics include a heuristic for deter-
`mining that the one or more finger contacts corre-
`spond to a command to translate content within a
`frame rather than translating an entire page that
`includes the frame.
`Id. at col. 123, lns 3-7 (emphasis added). Claim 10 recites:
`The computing device of claim 9, wherein the first
`set of heuristics comprises a heuristic for deter-
`mining that the one or more first finger contacts
`correspond to a one-dimensional horizontal screen
`scrolling
`command
`rather
`than
`the
`two-
`dimensional screen translation command based on
`the angle of initial movement of the finger contact
`with respect to the touch screen display.
`Id. at col. 124, ll. 1-7. The district court first found that
`the claim term “heuristic” was not indefinite, instead
`construing it as “one or more rules to be applied to data to
`assist in drawing inferences from that data.” Next, the
`court found that the “heuristic” limitations in claims 1, 2,
`9, and 10 described functions “without describing the
`structure necessary to perform the functions.” According-
`ly, the court concluded that these claim limitations were
`means-plus-function limitations under 35 U.S.C. § 112,
`¶6, despite not reciting the word “means.” The court next
`
`

`
`8
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`found that the specification contained sufficient “corre-
`sponding structure” capable of performing the claimed
`functions. 35 U.S.C. § 112. In doing so, the court limited
`the “next item heuristic” in claim 1 to “a heuristic that
`uses as one input a user’s finger tap on the right side of
`the device’s touch screen.” Based upon this construction,
`Motorola moved
`for summary
`judgment of non-
`infringement. The court concluded that the only accused
`products that use a “finger tap” in this manner are those
`that come pre-loaded with a specific program: the Amazon
`Kindle application. The court granted Motorola’s motion
`for summary judgment of non-infringement for the re-
`maining accused products.
`On appeal, Motorola again argues that “heuristic” is
`indefinite. In the alternative, Motorola argues that the
`district court correctly concluded that the heuristic limita-
`tions were drafted in means-plus-function format and
`correctly limited the “next item heuristic” limitation to
`the finger tap gesture. Apple points out that the claims
`do not use the word “means” and that this creates a
`strong presumption against construing the limitations as
`means-plus-function limitations. Apple argues that the
`heuristic limitations connote sufficiently definite struc-
`ture such that Motorola has not overcome this strong
`presumption.
`Whether claim language invokes Section 112, ¶6 is a
`question of law that we review de novo. Inventio AG v.
`ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350,
`1356 (Fed. Cir. 2011); Lighting World, Inc. v. Birchwood
`Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
`Section 112, ¶6 states:
`An element in a claim for a combination may be
`expressed as a means or step for performing a
`specified function without the recital of structure,
`material, or acts in support thereof, and such
`claim shall be construed to cover the correspond-
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`9
`
`ing structure, material, or acts described in the
`specification and equivalents thereof.
`35 U.S.C. § 112, ¶6. The overall means-plus-function
`analysis is a two-step process. Naturally, there is some
`analytical overlap between these two steps. In the first
`step, we must determine if the claim limitation is drafted
`in means-plus-function format. As part of this step, we
`must construe the claim limitation to decide if it connotes
`“sufficiently definite structure” to a person of ordinary
`skill in the art, which requires us to consider the specifi-
`cation (among other evidence). In the second step, if the
`limitation is in means-plus-function format, we must
`specifically review the specification for “corresponding
`structure.” Thus, while these two “structure” inquiries
`are inherently related, they are distinct.
`The Dissent is concerned that we have impermissibly
`looked for corresponding structure in the specification
`before deciding that the claim is in means-plus-function
`format thereby creating a new rule that renders “every
`means-plus-function claim term indefinite.” J. Prost
`Dissent at 3-4 (emphasis in original) (“Dissent”). This is
`not our analysis. The Dissent correctly notes that the
`first step in the means-plus-function analysis requires us
`to determine whether the entire claim limitation at issue
`connotes “sufficiently definite structure” to a person of
`ordinary skill in the art. Dissent at 2-3. In so doing, we
`naturally look to the specification, prosecution history,
`and relevant external evidence to construe the limitation.
`While this inquiry may be similar to looking for corre-
`sponding structure in the specification, our precedent
`requires it when deciding whether a claim limitation
`lacking means connotes sufficiently definite structure to a
`person of ordinary skill in the art. See, e.g., Inventio, 649
`F.3d at 1357 (“It is proper to consult the intrinsic record,
`including the written description, when determining if a
`challenger has rebutted the presumption that a claim
`lacking the term ‘means’ recites sufficiently definite
`
`

`
`10
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`structure.”); Lighting World, 382 F.3d at 1360-64 (exam-
`ining the written description and external evidence); Flo
`Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374
`(Fed. Cir. 2012) (examining remaining claim language,
`written description, and external evidence); Linear Tech.
`Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed.
`Cir. 2004) (examining remaining claim language and
`external evidence). Because these inquiries are distinct,
`it is possible to find that a claim limitation does not
`connote sufficiently definite structure despite the pres-
`ence of some corresponding structure in the specification.
`See, e.g., Massachusetts Inst. of Tech. v. Abacus Software,
`462 F.3d 1344, 1355 (Fed. Cir. 2006) (“MIT”); Welker
`Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096-97 (Fed.
`Cir. 2008). As such, not “every” mean-plus-function
`limitation is indefinite under our precedent; only those
`that lack the term means, do not connote sufficiently
`definite structure, and lack corresponding structure. We
`do not state or apply a different rule in this case. In this
`case, as we find that the claims connote sufficiently
`definite structure to a person of ordinary skill in the art,
`we do not reach the second step of the means-plus-
`function analysis.
`As the district court recognized, when a claim limita-
`tion lacks the term “means,” it creates a rebuttable pre-
`sumption that Section 112, ¶6 does not apply. See, e.g.,
`Lighting World, 382 F.3d at 1358; CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
`This presumption may be overcome if the claim fails to
`recite “sufficiently definite structure” or merely recites a
`“function without reciting sufficient structure for perform-
`ing that function.” Linear, 379 F.3d at 1319 (quoting
`Watts v. XL Sys. Inc., 232 F.3d 887, 880 (Fed. Cir. 2000));
`see also Inventio, 649 F.3d at 1356. We have repeatedly
`characterized this presumption as “strong” and “not
`readily overcome” and, as such, have “seldom” held that a
`limitation without recitation of “means” is a means-plus-
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`11
`
`function limitation. Lighting World, 382 F.3d at 1358,
`1362; Inventio, 649 F.3d at 1356; see also Flo Healthcare,
`697 F.3d at 1374 (“When the claim drafter has not sig-
`naled his intent to invoke § 112, ¶ 6 by using the term
`‘means,’ we are unwilling to apply that provision without
`a showing that the limitation essentially is devoid of
`anything that can be construed as structure.”).
`The Dissent suggests that choosing to include “means”
`in a claim limitation is a “minor drafting decision” that
`correspondingly merits little weight in a Section 112, ¶6
`analysis. Dissent at 7. We disagree. The strong pre-
`sumption created by not including means in a claim
`limitation provides clarity and predictability for the
`public and the patentee alike. It helps the public deter-
`mine when claim elements are expressly limited to struc-
`tures disclosed in the specification (or their equivalents)
`and provides the patentee with the tools for reliably
`invoking or avoiding means-plus-function claiming. It
`also signals to the court that the patentee has chosen to
`avail, or avoid, the benefits of Section 112, ¶6. We recog-
`nize that the choice to draft a claim in “broad structural
`terms” rather than in a means-plus-function format may
`render the claim more vulnerable to an invalidity attack.
`Id. Whether to draft a claim in broad structural terms is
`the claim drafter’s choice, and any resulting risk that
`emanates from that choice is not a basis for the court to
`rewrite a claim in means-plus-function format. See id.
`By focusing on the claim terms the patentee chose, this
`presumption also reaffirms the primacy of the claim
`language during claim construction, as outlined in Phil-
`lips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005). Here,
`as in all aspects of claim construction, “the name of the
`game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
`(Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of
`Protection and Interpretation of Claims–American Per-
`spectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497,
`499 (1990)).
`
`

`
`12
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`In this case, Motorola bears the burden of overcoming
`the presumption that Section 112, ¶6 does not apply by a
`preponderance of the evidence. See Apex Inc. v. Raritan
`Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003). The
`district court made several erroneous findings that led it
`to incorrectly conclude that Motorola rebutted this strong
`presumption. The district court misapplied our precedent
`by requiring the claim limitations of the ’949 patent
`themselves to disclose “a step-by-step algorithm as re-
`quired by Aristocrat Technologies.” Aristocrat and related
`cases hold that, if a patentee has invoked computer-
`implemented means-plus-function claiming, the corre-
`sponding structure in the specification for the computer
`implemented function must be an algorithm unless a
`general purpose computer is sufficient for performing the
`function. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
`Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (requiring
`disclosure of an algorithm when it is not disputed that
`claims were drafted in means-plus-function format); WMS
`Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349
`(Fed. Cir. 1999) (same); ePlus, Inc. v. Lawson Software,
`Inc., 700 F.3d 509, 518 (Fed. Cir. 2012); Typhoon Touch
`Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir.
`2011). But see In re Katz Interactive Call Processing
`Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (find-
`ing that disclosure of a general purpose computer is
`sufficient corresponding structure for means-plus-function
`claims).
`In all these cases, the claims recited the term
`“means,” thereby expressly invoking means-plus-function
`claiming. In addition, the parties in these cases did not
`dispute on appeal that these claims were drafted in
`means-plus-function format. Hence, where a claim is not
`drafted in means-plus-function format, the reasoning in
`the Aristocrat line of cases does not automatically apply,
`and an algorithm is therefore not necessarily required.
`The correct inquiry, when “means” is absent from a limi-
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`13
`
`tation, is whether the limitation, read in light of the
`remaining claim
`language, specification, prosecution
`history, and relevant extrinsic evidence, has sufficiently
`definite structure to a person of ordinary skill in the art.
`Here, the answer is yes.
`“Structure” to a person of ordinary skill in the art of
`computer-implemented inventions may differ from more
`traditional, mechanical structure. For example, looking
`for traditional “physical structure” in a computer software
`claim is fruitless because software does not contain physi-
`cal structures. Indeed, the typical physical structure that
`implements software, a computer, cannot be relied upon
`to provide sufficiently definite structure for a software
`claim lacking “means.” Rather, to one of skill in the art,
`the “structure” of computer software is understood
`through, for example, an outline of an algorithm, a
`flowchart, or a specific set of instructions or rules. See,
`e.g., Typhoon Touch, 659 F.3d at 1385 (“[T]he patent need
`only disclose sufficient structure for a person of skill in
`the field to provide an operative software program for the
`specified function.”); Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323, 1340 (Fed. Cir. 2008).1 Requiring tradi-
`tional physical structure in software limitations lacking
`the term means would result in all of these limitations
`being construed as means-plus-function limitations and
`subsequently being found indefinite.
`
`
`1 We cite these cases as examples of “structure” to a
`person ordinarily skilled in the art of computer software.
`We do not cite these cases for the principle that we must
`review the specification, prosecution history, and relevant
`external evidence when deciding if a claim limitation
`connotes structure. See Dissent at fn. 2. As discussed
`herein, there is ample support for that proposition else-
`where. See, e.g., Inventio, 649 F.3d at 1356-57.
`
`

`
`14
`
`
`
` APPLE INC. v. MOTOROLA, INC.
`
`A limitation has sufficient structure when it recites a
`claim term with a structural definition that is either
`provided in the specification or generally known in the
`art. See, e.g., Flo Healthcare, 697 F.3d at 1374 (“We will
`not apply § 112, ¶ 6 if the limitation contains a term that
`‘is used in common parlance or by persons of skill in the
`pertinent art to designate structure.’”) (quoting Lighting
`World, 382 F.3d at 1359); Personalized Media, 161 F.3d at
`704-05. In Personalized Media, we found that the claim
`term “detector,” by itself, connoted sufficient structure to
`a person of ordinary skill in the art. 161 F.3d at 704-05
`(agreeing with ALJ that “‘detector’ had a well-known
`meaning to those of skill in the electrical arts connotative
`of structure”). There, we contrasted the structural term
`“detector” with generic, non-structural, terms such as
`“means,” “element,” and “device.” Id. at 705; see also
`Apex, 325 F.3d at 1373 (finding that the term “circuit,”
`coupled with identifiers such as “interface,” “program-
`ming,” and “logic,” connoted sufficient structure to a
`person of ordinary skill in the art).
`Structure may also be provided by describing the
`claim limitation’s operation, such as its input, output, or
`connections. The limitation’s operation is more than just
`its function; it is how the function is achieved in the
`context of the invention. For example, in Linear, we
`found that the claim term “circuit” has a known structural
`definition and that the patent described the circuit’s
`operation, including its input, output, and objective. 379
`F.3d at 1320-21. Similarly, in Lighting World, we found
`that “connector” had a known structural definition and
`that the specification described its operational require-
`ments, including which claim elements it was connected
`to and how they were connected. 382 F.3d at 1361-63. In
`both cases, we found the presumption against means-
`plus-function claiming was unrebutted.
`Even if a patentee elects to use a “generic” claim term,
`such as “a nonce word or a verbal construct,” properly
`
`

`
`APPLE INC. v. MOTOROLA, INC.
`
`15
`
`construing that term (in view of the specification, prosecu-
`tion history, etc.) may still provide sufficient structure
`such that the presumption against means-plus-function
`claiming remains intact. Id. at 1360; see also Inventio,
`649 F.3d at 1356-57 (“Claims are interpreted in light of
`the written description supporting them, and that is true
`whether or not the claim construction involves interpret-
`ing a ‘means’ clause.”); MIT, 462 F.3d at 1354 (“The
`generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘de-
`vice,’ typically do not connote sufficiently definite struc-
`ture.”). For example, in Inventio, the claim included the
`generic term “device.” 649 F.3d at 1354 (reciting “at least
`one modernizing device and connecting the at least one
`modernizing device to said floor terminals and said at
`least one computing unit.”) (emphasis added). However,
`the specification described the modernizing device’s input,
`output, internal components, and how the internal com-
`ponents were interconnected. Id. at 1358-59. As such,
`the presumption against means-plus-function treatment
`was not overcome. See also Flo Healthcare, 697 F.3d at
`1374-75 (noting that “mechanism” is a generic term, but
`then looking to remaining claim language and written
`description before finding that the full claim limitation
`connoted structure). These cases teach that, if a limita-
`tion recites a term with a known structural meaning, or
`recites either a known or generic term with a sufficient
`description of its operation, the presumption against
`means-plus-function claiming remains intact.
`The limitation need not connote a single, specific
`structure; rather, it may describe a class of structures.
`See, e.g., Personalized Media Commc’ns, LLC v. Int’l
`Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even
`though the term ‘detector’ does not specifically evoke a
`particular structure, it does convey to one knowledgeable
`in the art a variety of structures known as ‘detectors.’”);
`Flo Healthcare, 697 F.3d at 1374-75 (finding that claim
`term “height adjustment mechanism” designates “a class
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` APPLE INC. v. MOTOROLA, INC.
`
`of structures that are generally understood to persons of
`skill in the art”). Indeed, even if the patent describes all
`structures that perform the recited function, this, by
`itself, does not overcome the strong presumption that
`means-plus-function claiming does not apply when the
`term “means” is not recited in the claim. Lighting World,
`382 F.3d at 1361-62.
`By contrast, if the claim merely recites a generic
`nonce word and the remaining claim language, specifica-
`tion, prosecution history, and relevant external evidence
`provide no further structural description to a person of
`ordinary skill in the art, then the presumption against
`means-plus-function claiming is rebutted. In MIT, for
`example, the claims recited a “colorant selection mecha-
`nism.” 462 F.3d at 1353. As noted, “mechanism” by itself
`does not connote sufficient structure, and the term “color-
`ant selection” was not defined in the specification or
`otherwise known to a person of ordinary skill in the art.
`Id. at 1353-55. Further, the patentee used the terms
`“mechanism” and “means” interchangeably in the specifi-
`cation. Id. at 1354; see also Mas-Hamilton Grp. v.
`LaGard Inc., 156 F.3d 1206, 1214-16 (Fed. Cir. 1998)
`(claim recited “element” and “member” and patent provid-
`ed no further structural description of these generic
`terms); Welker Bearing, 550 F.3d at 1096-97 (claim recited
`a “mechanism” without further structure described in
`specification). Thus, if a claim recites a generic term that,
`properly construed in light of the specification, lacks
`sufficiently definite structure to a person of ordinary skill
`in the art, the presumption is overcome and the patentee
`has invoked means-plus-function claiming.
`With this precedent in mind, we turn to the claim lim-
`itations at issue in the ’949 patent. We find that “heuris-
`tic” has a known meaning and the ’949 patent also
`describes the limitation’s operation, including its input,
`output, and how its output may be achieved. Accordingly,
`the heuristic claim limitations recited above have “suffi-
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`APPLE INC. v. MOTOROLA, INC.
`
`17
`
`ciently definite structure,” to a person of ordinary skill in
`the art, for performing the recited functions.
`Broadly speaking, the function of the recited limita-
`tions is to identify a command based upon particular
`finger contacts. To achieve this function, the patent
`describes “heuristics.” Depending upon the circumstanc-
`es, heuristic is not necessarily a generic, structureless
`“nonce word or a verbal construct” without any meaning,
`such as “mechanism,” “means,” “element,” or “widget.”
`The district court correctly determined that a person of
`ordinary skill in the art would understand “heuristic” to
`mean “one or more rules to be applied to data to assist in
`drawing inferences from that data.” In this sense, “heu-
`ristic” is similar to words that define a class of structures,
`such as “connector,” “circuit,” and “detector,” and it does
`not include all means for performing the recited function.
`See, e.g., Flo Healthcare, 697 F.3d at 1374 (“We will not
`apply § 112, ¶ 6 if the limitation contains a term that ‘is
`used in common parlance or by persons of skill in the
`pertinent art to designate structure’”) (quoting Lighting
`World, 382 F.3d at 1359); Personalized Media, 161 F.3d at
`704-05. The fact that heuristic is defined partly in terms
`of its function does not detract “from the definiteness of
`[the] structure” it may connote. Personalized Media, 161
`F.3d at 703-05. Indeed, “many devices take their names
`from the functions they perform.” Greenberg v. Ethicon
`Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996);
`see also MIT, 462 F.3d at 1354; Lighting World, 382 F.3d
`at 1359-60.
`We need not decide here whether the term “heuristic,”
`by itself, connotes sufficient structure to maintain the
`presumption against means-plus-function claiming be-
`cause, in this case, the claims do not nakedly recite heu-
`ristics without further description in the remaining claim
`language and specification. To the contrary, the claim
`language and specification disclose the heuristics’ opera-
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` APPLE INC. v. MOTOROLA, INC.
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`tion within the context of the invention, including the
`inputs, outputs, and how certain outputs are achieved.
`In all cases, the claimed input is a finger contact. The
`specification explains that the finger contacts may be
`taps, swipes, double taps, or finger rolling, and may
`involve one or two fingers contacting the screen at differ-
`ent initial angles. See, e.g., ’949 Patent at col. 19, ll. 30-
`46; col. 65, ll. 21-24; col. 66, ll. 47-51. The claims recite
`heuri