Partnering in Patents
Functional Claim Language,
USPTO Training & Williamson:
A Mechanical Perspective
October 21, 2015
Jack B. Hicks
Womble Carlyle Sandridge & Rice, LLP
300 North Greene Street, Suite 1900
Greensboro, NC 27401
(336) 574-8050 jhicks@wcsr.com
Adjunct Professor, Elon University School
of Law
David R. Crowe
Womble Carlyle Sandridge & Rice, LLP
300 North Greene Street, Suite 1900
Greensboro, NC 27401
(336) 574-8051 dcrowe@wcsr.com
35 USC § 112(f)
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
corresponding structure, material, or acts
described in the specification and equivalents
thereof.
2
Three-Prong Analysis for Invoking 112(f)
• (A) IF the claim limitation uses the term “means” or “step” or a term used
as a substitute for “means” that is a generic placeholder (also called a nonce
term or a non-structural term having no specific structural meaning) for
performing the claimed function;
AND
• (B) The term “means” or “step” or the generic placeholder is modified by
functional language, typically, but not always linked by the transition word
“for” (e.g., “means for”) or another linking word or phrase, such as
"configured to" or "so that";
THEN 112(f) Presumed Invoked; BUT
• (C) IF the term “means” or “step” or the generic placeholder is modified by
sufficient structure, material, or acts for performing the claimed function;
THEN 112(f) NOT Invoked
3
Williamson v. Citrix Online, LLC, 792 F.3d
1339 (Fed. Cir. 2015)
•
Claim: “a distributed learning control module for receiving
communications transmitted between the presenter and the
audience member computer systems and for relaying the
communications to an intended receiving computer system and
for coordinating the operation of the streaming data module.”
•
Held: 112(6) Invoked
– “Module is a well-known nonce word that can operate as a
substitute for "means" in the context of § 112, para. 6.” –
112(6) applies. (Id. at 1350)
–
“Because the '840 patent fails to disclose any structure
corresponding to the "coordinating" function of the
"distributed learning control module," we affirm the
judgment that claims 8-16 are invalid for indefiniteness
under 35 U.S.C. § 112, para. 2.” – (Id. at 1354)
4
“Mechanism” – Compare:
Mass. Inst. of Tech. v. Abacus Software, 462
F.3d 1344 (Fed. Cir. 2006) (112(6) Invoked)
Claim: “colorant selection mechanism for receiving
said modified appearance signals and for selecting
corresponding reproduction signals representing
values of said reproducing colorants to produce in
said medium a colorimetrically-matched
reproduction.”
Held: 112(6) Invoked
“The presumption here (to avoid 112(6)) is overcome
and that the phrase "colorant selection mechanism"
should be construed as a means-plus-function
limitation. The generic terms "mechanism," "means,"
"element," and "device," typically do not connote
sufficiently definite structure…. Here the patentee
used "mechanism" and "means" as synonyms.” (Id. at
1354)
5
“Mechanism” – Compare:
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
1580 (Fed. Cir. 1996) (112(6) NOT Invoked)
Claim: “a radially enlarged wheel on said sleeve and
said wheel and said one handle having a cooperating
detent mechanism defining the conjoint rotation of
said shafts in predetermined intervals.”
Held: 112(6) NOT Invoked:
“The fact that a particular mechanism -- here "detent
mechanism" -- is defined in functional terms is not
sufficient to convert a claim element containing that
term into a "means for performing a specified function"
within the meaning of section 112(6). Many devices
take their names from the functions they perform. The
examples are innumerable, such as "filter," "brake,"
"clamp," "screwdriver," or "lock." Indeed, several of the
devices at issue in this case have names that describe
their functions, such as "graspers," "cutters," and
"suture applicators.“” (Id. at 1583)
“Detent mechanism” does not invoke 112(6) even
though specification used “detent means” instead in
most instances. (Id.)
6
Lighting World, Inc. v. Birchwood Lighting,
Inc., 382 F.3d 1354 (Fed. Cir. 2004)
Claim: “a connector assembly for connecting each pair
of adjacent support members, said connector assembly
being pivotally connected to said pair of adjacent
support members.”
Held: 112(6) NOT Invoked
“In considering whether a claim term recites sufficient
structure to avoid application of section 112 P 6, we
have not required the claim term to denote a specific
structure. Instead, we have held that it is sufficient if the
claim term is used in common parlance or by persons of
skill in the pertinent art to designate structure, even if
the term covers a broad class of structures and even if
the term identifies the structures by their function.” (Id.
at 1359)
7
Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308
(Fed. Cir. 1999)
Claim: “An eyeglass hanger member
for mounting a pair of eyeglasses.”
Held: 112(6) NOT Invoked
The rest of the claim had sufficient
structure to support the claimed
function, for example, the member
was "made from flat sheet material"
with an "opening means formed . . .
below [its] upper edge." (Id. at 1318)
8
CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359 (Fed. Cir. 2002)
Claim: “First and second reciprocating members,
each reciprocating member having a first and a
second end, a portion of said first and second
reciprocating members being adapted for
substantially linear motion.”
Held: 112(6) NOT Invoked
“the dictionary definitions of "member" show that
an artisan of ordinary skill would understand this
term to have an ordinary meaning and to connote
beam-like structures.” (Id. at 1369)
9
Personalized Media Communs., LLC v. ITC,
(161 F.3d 696) (Fed. Cir. 1998)
Claim: “a digital detector for receiving said transmission and detecting said
predetermined signal in said transmission based on either a specific location or a
specific time.”
Held: 112(6) NOT Invoked
“The "digital detector" limitation does not use the word "means," and therefore this
limitation is presumed not to invoke § 112, P 6. Neither intrinsic nor extrinsic evidence
rebuts this presumption because the term "detector" is a sufficient recitation of
structure. "Detector" is not a generic structural term such as "means," "element," or
"device"; nor is it a coined term lacking a clear meaning, such as "widget" or "ram-afram.“ Instead, as noted by the ALJ by reference to dictionary definitions, "detector"
had a well-known meaning to those of skill in the electrical arts connotative of
structure, including a rectifier or demodulator.” (Id. at 704)
10
Watts v. XL Sys., 232 F.3d 877 (Fed. Cir.
2000)
Claim: “The joints each having a second end formed with
tapered external threads dimensioned such that one such joint
may be sealingly connected directly with another such joint; the
threads being of sufficient length and taper such that the pipe
wall strength of the first end in the area of the smallest diameter
of thread engagement is at least three-fourths of the average pipe
wall strength of the joints of pipe.”
Held: 112(6) NOT Invoked, sufficient structure provided:
“The claim limitation recites "a second end formed with tapered
external threads" and refers to "a first end" with "tapered internal
threads." These terms clearly have reasonably well understood
meanings in the art as names for structure.” (Id. at 881)
11
Using “Means” May NOT Invoke 112(6):
Cole v. Kimberly-Clark Corp., 102 F.3d 524
(Fed. Cir. 1996)
Claim: “Perforation means extending from the leg band means to the waist band means through
the outer impermeable layer means for tearing the outer impermeable layer means for removing
the training brief in case of an accident by the user.”
Held: 112(6) NOT Invoked
“The drafter of claim 1 in the '239 patent was clearly enamored of the word "means": six of seven
elements in that claim include the word "means," which occurs in the claim fourteen times. We
find, however, no reason to construe any of the claim language in claim 1 as reciting means-plusfunction elements within the meaning of § 112, P 6. For example, the "perforation means . . . for
tearing" element of Cole's claim fails to satisfy the statute because it describes the structure
supporting the tearing function (i.e., perforations).” (Id. at 531)
12
Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005)
– 1. Building modules adapted to fit together for construction of fire, sound and impact
resistant security barriers and rooms for use in securing records and persons, comprising
in combination, an outer shell of substantially parallelepiped shaped with two outer steel
plate panel sections of greater surface area serving as inner and outer walls for a structure
when a plurality of the modules are fitted together, sealant means spacing the two panel
sections from steel to steel contact with each other by a thermal-acoustical barrier
material, and further means disposed inside the shell for increasing its load bearing
capacity comprising internal steel baffles extending inwardly from the steel shell
walls.
13
Phillips Cont.
Claim: “means disposed inside the shell for increasing its load bearing
capacity comprising internal steel baffles extending inwardly from the steel
shell walls.”
Court Held 112(6) NOT Invoked
“We agree with the panel that the term "baffles" is not means-plus-function
language that invokes 35 U.S.C. § 112, paragraph 6. To be sure, the claim
refers to "means disposed inside the shell for increasing its load bearing
capacity," a formulation that would ordinarily be regarded as invoking the
means-plus-function claim format. However, the claim specifically identifies
"internal steel baffles" as structure that performs the recited function of
increasing the shell's load-bearing capacity.” (Id. at 1311, emphasis added)
14
“There is nothing inherently wrong
with defining some part of an invention
in functional terms. Functional
language does not, in and of itself,
render a claim improper” MPEP
§2173.05(g)
15
More on Phillips
• “The critical language of claim 1 of the '798 patent—’further means
disposed inside the shell for increasing its load bearing capacity comprising
internal steel baffles extending inwardly from the steel shell walls’-imposes three clear requirements with respect to the baffles…. they must be
part of the load-bearing means for the wall section.” (Id. at 1324)
– Thus the function of the baffles was a requirement of structure for purposes of
infringement.
• The Court was completely silent on any § 112 concerns over either
functional claim phrase:
– Building modules adapted to fit together for construction of fire, sound and
impact resistant security barriers and rooms
– (Building modules)…for use in securing records and persons.
16
Festo Corp. v. Shoketsu Kinzoku
Kabushiki Co., 535 U.S. 722 (2002)
• Claim: “(The) driven member includes a cylindrical
sleeve made of a magnetizable material.”
• The material is claimed by its characteristic and not
on the particular composition of the material.
• The Court was silent regarding any concern over 112
issues from this language.
17
Ex Parte Miyazaki
(BPAI: November 19, 2008)
Claim: “26. A large printer comprising:
a sheet feeding area operable to feed a
plurality of paper rolls ranging in width from 210
mm to 1120 mm, a substantially flat sheet of
paper ranging in length from 420 mm to 1580
mm and at least one stiff carton ranging in length
from 420 mm to 730 mm.” (Claim in its entirety.)
Held: Rejected under 112(1) Enablement
A claim lacks enablement when a feature is a
purely functional recitation with no limitation of
structure while simultaneously failing to invoke
the benefits of 112(6).
18
Definiteness – 35 U.S.C. 112(b)
•
To determine whether a claim limitation expressed in
functional language is definite with clear scope/meaning,
consider:
•
Is there a clear indication of the scope of subject matter covered
by the language, e.g., a specification definition or known
meaning in the art?
•
Does the limitation have well defined boundaries or does it only
express a problem solved or intended result?
•
Would one of ordinary skill in the relevant art know what
structures/steps are covered by the limitation?
19
Conclusions for Mechanical Cases:
• To avoid the unintentional application of 112(f)
– Avoid the term “means”.
– Name devices with nouns that describe their functions
• "filter," "brake," "clamp," "screwdriver," "lock," "graspers," "cutters," and "suture
applicators.“
– Limit the combination of these functional nouns with nonce words
• E.g. “connector” versus “connector assembly”
• E.g. “detent” versus “detent assembly”
• E.g. “hanger” versus “hanger assembly”
• There is nothing inherently wrong with defining some part of an invention
in functional terms. Functional language does not, in and of itself, render a
claim improper.
20
QUESTIONS, CONCERNS,
COMMENTS?
21
Attorney Bio Information
Jack Hicks is a licensed patent attorney with more than 25 years of experience. He counsels
clients to determine the type and scope of intellectual property protection that meets their
business goals. A substantial portion of his practice includes the preparation and prosecution
of U.S. and foreign patent and trademark applications and his practice focuses upon
counseling clients in national and international intellectual property evaluation, protection
and enforcement.
In addition to his work with Womble Carlyle, Jack serves as an adjunct professor at Elon
University School of Law where he teaches intellectual property law and leads student
groups for course study in destinations including China, Vietnam and Singapore.
http://www.wcsr.com/Professionals/Lawyer-Bios/Jack-B-Hicks
David Crowe is a registered patent attorney and an associate in Womble Carlyle’s
Intellectual Property practice group. David’s practice focuses on all aspects related to the
acquisition of patent rights, including patentability studies, as well as application
preparation and prosecution for both utility and design applications in the U.S. and abroad.
David’s practice covers mechanical, electromechanical, optical and materials based
technologies.
He is also a former primary patent examiner having worked in the illumination art unit at
the USPTO.
http://www.wcsr.com/Professionals/Lawyer-Bios/David-R-Crowe
22