  United States Court of Appeals
      for the Federal Circuit
                ______________________

                  ZEROCLICK, LLC,
                   Plaintiff-Appellant

                           v.

                    APPLE INC.,
                  Defendant-Appellee
                ______________________

                      2017-1267
                ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 3:15-cv-04417-JST,
Judge Jon S. Tigar.
                 ______________________

                 Decided: June 1, 2018
                ______________________

    BRIAN DAVID LEDAHL, Russ August & Kabat, Los
Angeles, CA, argued for plaintiff-appellant. Also repre-
sented by MARC AARON FENSTER.

    JOSEPH R. PALMORE, Morrison & Foerster LLP, Wash-
ington, DC, argued for defendant-appellee. Also repre-
sented by SETH W. LLOYD, BRIAN ROBERT MATSUI; SCOTT
F. LLEWELLYN, Denver, CO.
                ______________________

  Before REYNA, TARANTO, and HUGHES, Circuit Judges.
2                                ZEROCLICK, LLC   v. APPLE INC.



HUGHES, Circuit Judge.
    Zeroclick, LLC sued Apple Inc. in the U.S. District
Court for the Northern District of California, asserting
claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19
of U.S. Patent No. 8,549,443. The district court found the
asserted claims invalid for indefiniteness, reasoning that
the claims recited means-plus-function terms for which
the specifications do not disclose sufficient structure.
Because the district court failed to undertake the relevant
inquiry and make related factual findings to support its
conclusion that the asserted claims recited means-plus-
function terms, we vacate and remand.
                             I
     The ’691 and ’443 patents relate to modifications to
the graphical user interfaces of devices such as computers
and mobile phones, modifications that allow the interfaces
to be controlled using pre-defined pointer or touch move-
ments instead of mouse clicks. 1 J.A. 3–4. More specifical-
ly, the claimed invention contemplates updating existing
user interface programs by using a two-step method
recited in claims 2 and 52 of the ’691 patent, or by making
two configuration changes to the user interface code as
recited in claim 19 of the ’443 patent.
    Claim 2 of the ’691 patent recites:
    2. A graphical user interface (GUI), which may
    comprise an update of an existing program, that
    may fully operate a GUI by a two step method of
    movement of a pointer (0) to operate one or more
    functions within the GUI,
    wherein, said existing program is any existing


    1  The ’443 patent is a continuation of the ’691 pa-
tent. Both patents essentially have a common specifica-
tion.
ZEROCLICK, LLC   v. APPLE INC.                            3



   program that can operate the movement of the
   pointer (0) over a screen (300) and has one or
   more functions operated by one or more other
   methods apart from said two step method,
   and/or one or more functions operated by said one
   or more other methods in said existing program
   can be updated to operate by said two step meth-
   od,
   wherein said GUI executes one or more functions
   within the GUI by the completion of the following
   said two step method:
   first said pointer (0) is immediately adjacent or
   passes within a control area (1), which is an area
   of the screen (300) that may be any size including
   from a pixel on the screen (300) to occupying the
   whole screen (300), and
   second by the completion of a subsequent move-
   ment of said pointer (0) according to a specified
   movement generates a ‘click’ event, thereby trig-
   gering one or more functions within the GUI.
’691 patent, col. 81 ll. 6–28. Claim 52 is nearly identical
to claim 2, except that it covers the “method of operating a
graphical user interface” described in claim 2, while claim
2 covers the graphical user interface itself. Id. at col. 85
l. 52–col. 86 l. 9.
   Claim 19 of the ’443 patent recites:
   19. A device capable of executing software com-
   prising:
   a touch-sensitive screen configured to detect being
   touched by a user’s finger without requiring an
   exertion of pressure on the screen;
   a processor connected to the touch-sensitive
   screen and configured to receive from the screen
4                                  ZEROCLICK, LLC   v. APPLE INC.



    information regarding locations touched by the
    user’s finger;
    executable user interface code stored in a memory
    connected to the processor;
    the user interface code executable by the proces-
    sor;
    the user interface code being configured to detect
    one or more locations touched by a movement of
    the user’s finger on the screen without requiring
    the exertion of pressure and determine therefrom
    a selected operation; and
    the user interface code is further configured to
    cause one or more selected operations, which in-
    cludes one or more functions available to the user
    interface code of the device, to deactivate while
    the user’s finger is touching one or more locations
    on the screen.
’443 patent, col. 82 ll. 10–29.
    Zeroclick alleged that Apple infringed claims 2 and 52
of the ’691 patent and claim 19 of the ’443 patent. Apple
responded by asserting invalidity of those claims. At the
claim construction stage, the district court found the
asserted claims invalid for indefiniteness, reasoning that
the claims recite means-plus-function limitations for
which the specifications do not disclose sufficient struc-
ture. Zeroclick appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
                              II
    “Regarding questions of claim construction, including
whether claim language invokes 35 U.S.C. § 112, [¶] 6,
the district court’s determinations based on evidence
intrinsic to the patent as well as its ultimate interpreta-
tions of the patent claims are legal questions that we
review de novo.” Williamson v. Citrix Online, LLC,
ZEROCLICK, LLC   v. APPLE INC.                            5



792 F.3d 1339, 1346 (Fed. Cir. 2015) (en banc). “The
ultimate conclusion that a claim is indefinite under
35 U.S.C. § 112, ¶ 2 is a legal conclusion, which we review
de novo.” Cox Commc’ns, Inc. v. Sprint Commc’n Co.,
838 F.3d 1224, 1228 (Fed. Cir. 2016) (footnote omitted). 2
    During claim construction, the district court found
that the limitation “program that can operate the move-
ment of the pointer (0)” recited in claims 2 and 52 of the
’691 patent is a means-plus-function term. J.A. 9–10.
The court identified “program” as the means that per-
forms the function of “operat[ing] the movement of the
pointer (0) over a screen (300).” J.A. 10 (alteration in
original). The court also found that the limitation “user
interface code being configured to detect one or more
locations touched by a movement of the user’s finger on
the screen without requiring the exertion of pressure and
determine therefrom a selected operation” recited in claim
19 of the ’443 patent is a means-plus-function term.
J.A. 11–12. The court identified “user interface code” as
the means of performing a two-fold function: “(1) ‘to detect
one or more locations touched by a movement of the user’s
finger on a screen without requiring the exertion of pres-
sure’; and (2) to ‘determine therefrom a selected opera-
tion.’” J.A. 12 (citations omitted). Zeroclick argues that
the district court erred in construing these terms as
means-plus-function limitations. We agree.




   2     The America Invents Act (AIA) designated § 112,
¶ 2 as § 112(b) and § 112, ¶ 6 as § 112(f). Pub. L. No. 112-
29, § 4(c), 125 Stat. 284, 296 (2011). However, the
amended version of § 112 applies only to patent applica-
tions “filed on or after” September 16, 2012. See AIA
§ 4(e), 125 Stat. at 297. Because the application that led
to the ’691 and ’443 patents was filed before that date, we
refer to the pre-AIA versions of these § 112 provisions.
6                               ZEROCLICK, LLC   v. APPLE INC.



    “To determine whether § 112, para. 6 applies to a
claim limitation, our precedent has long recognized the
importance of the presence or absence of the word
‘means.’” Williamson, 792 F.3d at 1348. The failure to
use the word “means” creates a rebuttable presumption
that § 112, ¶ 6 does not apply. Id. But the presumption
can be overcome, and § 112, ¶ 6 will apply, “if the chal-
lenger demonstrates that the claim term fails to recite
sufficiently definite structure or else recites function
without reciting sufficient structure for performing that
function.”    Id. (emphasis added) (internal quotation
marks, brackets, and citation omitted); see also Advanced
Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
1347 (Fed. Cir. 2016) (“In determining whether this
presumption has been rebutted, the challenger must
establish by a preponderance of the evidence that the
claims are to be governed by § 112, ¶ 6.”); Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996) (noting that the district court relied on evidence
extrinsic to the patent in reaching its conclusion that a
term invoked means-plus-function treatment).
    When evaluating whether a claim limitation invokes
§ 112, ¶ 6, the essential inquiry remains “whether the
words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as
the name for structure.” Williamson, 792 F.3d at 1348;
Greenberg, 91 F.3d at 1583 (“What is important is . . . that
the term, as the name for structure, has a reasonably well
understood meaning in the art.”). That determination
must be made under the traditional claim construction
principles, on an element-by-element basis, and in light of
evidence intrinsic and extrinsic to the asserted patents.
See, e.g., Personalized Media Commc’ns, LLC v. Int’l
Trade Comm’n, 161 F.3d 696, 702–04 (Fed. Cir. 1998)
(stating that “[w]hether certain claim language invokes
35 U.S.C. § 112, ¶ 6 is an exercise in claim construction”
and that the presumption that § 112, ¶ 6 does not apply
ZEROCLICK, LLC   v. APPLE INC.                            7



“can be rebutted if the evidence intrinsic to the patent and
any relevant extrinsic evidence so warrant”); Cole v.
Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996)
(noting that whether § 112, ¶ 6 is invoked involves an
analysis of the “patent and its prosecution history,” and
consulting a dictionary definition of “perforation” to
understand if one of skill in the art would understand the
term to connote structure). The district court failed to
undertake that inquiry and make related factual findings.
     Neither of the limitations at issue uses the word
“means.” Presumptively, therefore, § 112, ¶ 6 does not
apply to the limitations. Apple argued that the limita-
tions must be construed under § 112, ¶ 6, but provided no
evidentiary support for that position. Accordingly, Apple
failed to carry its burden, and the presumption against
the application of § 112, ¶ 6 to the disputed limitations
remained unrebutted. The district court’s discussion is
revealing: its determination that the terms must be
construed as means-plus-function limitations is couched
in conclusory language. The court relied on Apple’s
arguments, contrasting them against Zeroclick’s conten-
tions, but pointed to no record evidence that supports its
ultimate conclusion regarding whether § 112, ¶ 6 applies
to the asserted claims. Cf. J.A. 10 (“[T]he Court concludes
that the term ‘program that can operate the movement of
the pointer (0)’ is a means-plus-function term because the
claim itself fails to recite any structure whatsoever, let
alone ‘sufficiently definite structure.’” (quoting William-
son, 792 F.3d at 1349)); J.A. 12 (“[B]ecause the use of the
phrase ‘user interface code’ provides the same ‘black box
recitation of structure’ as the use of the word ‘module’ did
in Williamson, and the claim language provides no addi-
tional clarification regarding the structure of the term,
the Court concludes that ‘user interface code’ constitutes a
means-plus-function term.” (quoting Williamson, 792 F.3d
at 1350)). The court thus legally erred by not giving effect
8                               ZEROCLICK, LLC   v. APPLE INC.



to the unrebutted presumption against the application of
§ 112, ¶ 6.
    By taking that approach, the district court effectively
treated “program” and “user interface code” as nonce
words, which can operate as substitutes for “means” and
presumptively bring the disputed claims limitations
within the ambit of § 112, ¶ 6. That is erroneous for at
least three related reasons. First, the mere fact that the
disputed limitations incorporate functional language does
not automatically convert the words into means for per-
forming such functions. See Greenberg, 91 F.3d at 1583
(“Many devices take their names from the functions they
perform. The examples are innumerable, such as ‘filter,’
‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’”). Second, the
court’s analysis removed the terms from their context,
which otherwise strongly suggests the plain and ordinary
meaning of the terms. Claims 2 and 52 of the ’691 patent,
for example, recite “[a] graphical user interface,” which
their preambles make clear, may comprise “an update of
an existing program” using a two-step method. See, e.g.,
’691 patent, col. 81 ll. 6–28 (emphasis added). Claim 19 of
the ’443 patent similarly tethers “user interface code”—
code meant to be updated using two configuration chang-
es recited in the claim—to the code “stored in a memory
connected to the processor.” ’443 patent, col. 82 ll. 10–29.
That processor is in turn “configured to receive from the
screen information regarding locations touched by the
user’s finger.” Id. Given that “[t]he basic concept behind
both of the patents-in-suit is relatively simple,” J.A. 3, a
person of ordinary skill in the art could reasonably dis-
cern from the claim language that the words “program,”
as used in claims 2 and 52 of the ’691 patent, and “user
interface code,” as used in claim 19 of the ’443 patent, are
used not as generic terms or black box recitations of
structure or abstractions, but rather as specific references
to conventional graphical user interface programs or code,
existing in prior art at the time of the inventions.
ZEROCLICK, LLC   v. APPLE INC.                               9



      Indeed, the distinction drawn between the graphical
user interfaces in the prior art and the improvement to
such interfaces in the claimed invention—laid bare in the
written descriptions supporting the asserted claims—
bolsters that conclusion. See, e.g., ’691 patent, col. 3 ll. 3–
20 (disclosing that “the programming design for all graph-
ical interfaces has been based with the mindset of using
the movement of the mouse (or other pointer device) to
locate a graphical user interface (GUI) control in conjunc-
tion with the double click, the click, the up and down
button press to activate the function of the GUI control,”
but that the invention claimed in the patent “provides the
design of the computer interface to the movement of the
pointer alone” (emphasis added)); ’443 patent, col. 3 ll. 3–
15 (same); see also ’691 patent, col. 1 ll. 31–39 (disclosing
that “the concept of activating some element of a GUI
without clicking is known,” and further that the nearest
prior art “described the typical embodiment of the conven-
tional graphical user interface GUI and how it could be
generated by a computer”); id. at col. 6 ll. 15–19, col. 11
ll. 12–40 (noting backward compatibility, “enabl[ing] all
existing GUI’s [sic], which would only have their tradi-
tional click methodology, to automatically be changed to
add or replace it with the Zeroclick methodology” as a
“definite benefit” of the Zeroclick invention over the “well
accepted conventional methodology”). Apple produces no
other evidence, intrinsic or extrinsic to the asserted
patents, that casts doubt on that conclusion.
    Third, and relatedly, the district court made no perti-
nent finding that compels the conclusion that a conven-
tional graphical user interface program or code is used in
common parlance as substitute for “means.” Cf. William-
son, 792 F.3d at 1350–51 (affirming the district court’s
finding that “‘module’ is simply a generic description for
software or hardware that performs a specified function”
based on, among other things, the patent owner acknowl-
edging so). The district court thus erred by effectively
10                               ZEROCLICK, LLC   v. APPLE INC.



treating “program” and “user interface code” as nonce
words and concluding in turn that the claims recited
means-plus-function limitations.
                           III
    Based on the foregoing, we vacate the district court’s
judgment and remand for further proceedings consistent
with this opinion.
              VACATED AND REMANDED
     Costs to Zeroclick.
