Functional Claiming: Guidance from the Courts [Software and Electrical Arts Perspective] By Nicholas Camillo 1 and Sarah Knight 2

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1 Functional Claiming: Guidance from the Courts [Software and Electrical Arts Perspective] I. Introduction By Nicholas Camillo 1 and Sarah Knight 2 Patent claims are integral in defining the scope of protection afforded to a patentee. 3 Claims are the portion of the patent application that distinctly states the subject matter of the invention. 4 Claims can be written structurally or functionally, but are bound by the breadth of the disclosure. 5 Claims that are written with functional language may fall under 35 U.S.C. 112(f), which indicates that such claims shall be construed to cover the corresponding structure, material, or acts described in the specification and the equivalents to those features described in the specification. Claims that fall into this category are referred to as means-plus-function claims due to the traditional format for invoking 35 U.S.C. 112 (pre-aia) sixth paragraph, where an element is referred to as a means for performing some function. The trade-off for claiming an invention solely in terms of its function is that the description of the structures capable of performing that function as provided in the specification limits the scope of the claim. There has been a recent trend to avoid using means-plus-function claiming in the software and electrical arts to avoid being unduly limited to the specific structures described in the specification (and possibly invalidated for lack thereof). However, since the structure of software tends to be steps for performing a particular function, the line between structure and function can be blurry. Indeed, software patents have been criticized for having functional claims due to the fact that they are primarily defined by function properties. 6 With the recent decision in Williamson v. Citrix 7, there is no longer a strong presumption that a patent applicant (or patentee) can avoid invoking 35 U.S.C. 112(f) by not using means for in a claim. This paper discusses the current state of the law with regards to functional claiming and 35 U.S.C. 112(f). Following this introduction, part II of this paper will examine a historical overview of the patent system and the evolution of patent claims. Part III will analyze 35 U.S.C. 112(f) in relation to software and electronic arts cases. 1 Nicholas Camillo is a legal intern and Juris Doctor Candidate 2016 from the University of Florida, Levin College of Law, Gainesville, FL. 2 Sarah Knight is a registered Patent Attorney and Founding Partner of Talem IP Law, LLP, Gainesville FL. 3 U.S. PAT. & TRADEMARK OFFICE MANUAL OF PATENT EXAMINING PROCEDURE (k) (9th ed. Mar. 2014) [hereinafter MPEP]; see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) U.S.C. 112(b) (2012); 35 C.F.R (2013); MPEP, supra note 1, (i) C.J.S. PATENTS 206, Westlaw (database updated June 2015). 6 See generally, Kevin Emerson Collins, Patent Law s Functionality Malfunction and the Problem of Overbroad, Functional Software Patents, 90 WASH. U. L. REV. 1399, 1402 (2013). 7 Williamson v. Citrix, 792 F.3d 1094 (Fed. Cir. 2015). 1

2 II. Historical Overview In the early years of the patent system, the applicant was not required to define the full scope of the patent within their claims, but instead had to describe their invention roughly enough to differentiate it from preceding inventions. 8 Under this central claiming system, the Patent Office would grant a patent without analyzing its central claims, thus, making it difficult to litigate its patentability during infringement cases. 9 Eventually, the Supreme Court in Evans v. Eaton articulated the importance of disclosing the full scope of the patent, stating that: [t]he specification, then, has two objects; one is to make known the manner of constructing the machine (if the invention is of a machine) so as to enable artizans to make and use it, and thus to give the public the full benefit of the discovery after the expiration of the patent. It is not pretended that the plaintiff's patent is not in this respect sufficiently exact and minute in the description. But whether it be so or not, is not material to the present inquiry. The other object of the specification is, to put the public in possession of what the party claims as his own invention, so as to ascertain if he claim any thing that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. 10 With regards to claims, there were no significant changes to the Patent Act until 1870 when the patent applicant was required to define the scope of the invention within its claims making it easier for courts to decipher the essential elements of an invention. 11 After the amendment to the Patent Act in 1870, claims frequently included broad language that would refer to the written description of the invention, resulting in inventions being defined by functional language. 12 In 1940, the Supreme Court denounced the use of functional language in Halliburton Oil Well Cementing Co. v. Walker. 13 In Halliburton, the patent in dispute involved a resonator that could tune a receiver to a certain frequency. 14 The language of the claims described what the invention would do rather than explaining the structure or the physical characteristics of the invention. 15. The Court held that the patent was invalid because functional language was included in the claim and because it fail[ed] to adequately depict the structure, mode, and 8 See Patent Act of , 1 Stat 109, 110; see also Jeanne C. Fromer, Claiming Intellectual Property, 76 U. CHI. L. REV. 719, 732 (2009) (discussing the historical development of patent claims). 9 Id. 10 Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 433 (1822). 11 Fromer, supra note 3 at 734 (discussing the shift from central claiming to peripheral claiming). 12 Charles W. Adams, The Doctrine of Equivalents: Becoming a Derelict on the Waters of Patent Law, 84 NEB. L. REV. 1113, 1118 (2006). 13 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946). 14 Id. at Id. at 9. 2

3 operation of the parts in combination 16 Furthermore, the Court concluded that claims generally were too broad and ambiguous. In response to Halliburton, Congress added a provision to the Patent Act in 1952 codifying the use of means-plus-function claims. 17 Section of the 1952 Patent Act allows a patent applicant to describe an invention by the means used to perform a function, but is limited to describing those means that are equivalent to the means in the patent specification. 18 Often, the best way to describe an invention is in terms of the means for performing particular functions. In fact, Judge Learned Hand believed that, to some degree, functional claims were necessary: If the claims were limited to the concise and exact terms in which the specifications ordinarily describe a single example of the invention, few, if any, patents, would have value, for there are generally many variants well-known to the art, which will at once suggest themselves as practicable substitutes for the specific details of the machine or process so disclosed. It is the office of the claims to cover these, and it is usually exceedingly difficult, and sometimes impossible, to do so except in language that is to some degree functional ; for obviously it is impossible to enumerate all possible variants. Indeed, some degree of permissible latitude would seem to follow from the doctrine of equivalents, which was devised to eke out verbal insufficiencies of claims. Since by virtue of that doctrine a claim will cover whatever will accomplish substantially the same result by substantially the same means, it cannot be that a claim becomes invalid when it states expressly what the courts would in any event imply. 19 Although functional claiming is permissible (and sometimes practicable), it is not always desirable with respect to breadth of claim scope for a claim to invoke 35 U.S.C. 112(f) (35 U.S.C. 112 (pre-aia) 6). III. 112(f), Software, and the Electrical Arts Software-related inventions are particularly susceptible to purely functional claiming since the invention may be intrinsically functional in nature. For a number of years, it has been understood that if a claim limitation recites functional language, and uses the term means or 16 Id. at Walker-Jenkinson Co. Inc. v. Hilton Davis Chem. Co. 520 U.S. 17, 27 (1997). 18 Section of the 1952 Patent Act is now codified as 35 U.S.C. 112(f) (stating that [a]n 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 ); see also Walker-Jenkinson, 520 U.S. at Philip A. Hunt Co. v. Mallinckrodt Chem. Works, 177 F.2d 583, 585 (1949) (finding that functional claims are valid if the patentee can prove that the language within the claim is equivalent to the means by which the invention is to be practiced ). 3

4 step, it is presumed to invoke 35 U.S.C. 112(f) (35 U.S.C. 112 (pre-aia) 6). 20 Conversely, it was understood that if a claim limitation does not use the term means or step, then the claim is presumed to not invoke 35 U.S.C. 112(f) (35 U.S.C. 112 (pre-aia) 6). For example, in Altiris, the Federal Circuit stated that the court would presume that the inventor intended to invoke 35 U.S.C for means-plus-function clauses, if a claim uses the word means to describe a limitation. 21 The court then outlined the following two-prong analysis: (1) the court must identify the function of the limitation if the court decides that the claim limitation is a means-plus function limitation; and (2) the court will determine the corresponding structure in the written description necessary to perform that function. 22 The court ultimately found that commands are structures in the realm of software, but are not an adequate structure to accomplish the function. 23 The court reasoned that the commands are exclusively functional terms and an individual would still refer to the specification to determine the structure of those means. 24 As another example, in Personalized Media, the Federal Circuit stated that the use of the word means creates a presumption that 35 U.S.C. 112 (pre AIA) 6 is triggered, while the lack of use of the word means creates a presumption that 35 U.S.C. 112 (pre AIA) 6 is not triggered. 25 Furthermore, [i]n deciding whether either presumption has been rebutted, the focus remains on whether the claim as properly construed recited sufficiently definite structure to avoid the ambit of 112, The court found that the digital detector limitation does not trigger 35 U.S.C. 112(f), reasoning that detector is not a generic structural term, but instead those of skill in the electrical arts knew its meaning to be connotative of structure. 27 Although it was stated in Personalized Media that there would be a rebuttable presumption that 35 U.S.C. 112 (pre AIA) 6 is not triggered when there is no use of term means in a claim limitation, the Federal Circuit did not discuss the strength of this presumption until Lightning World. 28 In Lightning World, the Federal Circuit affirmed the rule in Personalized Media holding the rebuttable presumption that 35 U.S.C. 112 (pre AIA) 6 does not apply if a claim term does not use means. But, the court also added that [t]he presumption that a limitation lacking the term means is not subject to 35 U.S.C. 112 (pre AIA) 6 can be overcome if it is demonstrated that the claim term fails to state adequately explicit structure or states function 20 MPEP, supra note 1, 2181(I). 21 Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003) (citing Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997). 22 Altiris, 318 F.3d at (noting that the structure disclosed in the specification is only equitable if the specification links or associated that structure to the function stated in the claim) (citing B. Braun Med. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). 23 Altiris, 318 F.3d at Id. 25 Personalized Media Communications, LLC v. Int l Trade Com n, 161 F.3d 696, 703 (Fed. Cir. 1998). 26 Id. at Id. 28 Lightning World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004). 4

5 without asserting adequate structure for accomplishing that function. 29 The court held that the presumption based upon the absence of the term means is strong and difficult to overcome. 30 The court noted the following: In considering whether a claim term recites sufficient structure to avoid application of section 112 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. 31 The court reasoned that the word connector and connector assembly are understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct... and is simply a substitute for the term means for. 32 Similar to the holding in Lightning World, in Inventio, the Federal Circuit held that the term modernizing device presumptively connotes sufficiently definite structure to those of skill in the art... and that presumption is a strong one that is not readily overcome. 33 Furthermore, the claimed computing unit, similar to the term modernizing device, was held to also presumptively connote[] sufficiently definite structure to those of skill in the art. 34 Also, in Flo Healthcare, the Federal Circuit found that the Board of Patent Appeals and Interferences erred in holding that the term height adjustment mechanism limitation triggers 35 U.S.C. 112(f) (35 U.S.C. 112 (pre AIA) 6). 35 The court stated that the presumption against a means-plusfunction is not easily rebutted and that the presumption based upon the absence of the term means is strong and difficult to overcome. 36 The court held the following: When the claim drafter has not signaled 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. Thus, 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 Id. at 1358 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). 30 Lightning World, 382 F.3d at Id. at Id. at Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1358 (Fed. Cir. 2011). 34 The case was reversed and remanded back to the district court to interpret the claim construction consistent with the Federal Circuit opinion. Id. at Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (2012). 36 Id. at Id (quoting Lightning World, 382 F.3d at 1358). 5

6 The court reasoned that the term height adjustment mechanism, as used in the 178 patent and in common parlance, reasonably imparts sufficient structure so that the presumption against applying 112, 6 in this context is not overcome. 38 Additionally, in Apple v. Motorola, the Federal Court maintained its stance regarding the weight of the presumption against triggering 35 U.S.C. 112(f) stating: 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-function limitation. 39 The court went on to note that drafting a claim in broad structural terms instead of a means-plus-function format might make the claim more vulnerable to attack, but it is the claim drafter s choice to draft a claim in broad structural terms and the claim drafter assumes all the consequences of that choice. 40 The court does not believe it is their duty to rewrite claims in a means-plus-function format. 41 The court concluded that the term heuristic has a known meaning and has sufficiently definite structure. 42 In Lightning World, Inventio, Flo Healthcare, and Apple, there was a high threshold evident when trying to overcome the presumption that 35 U.S.C. 112(f) (35 U.S.C. 112 (pre AIA) 6) does not apply to a claim limitation that does not use the term means. However, due to the recent en banc decision in Williamson, the Federal Circuit effectively lowered the threshold for overcoming the presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that is absent of the term means, and in effect overruled the holdings in Lightning World, Inventio, Flo Healthcare Solutions, and Apple. 43 In Williamson, the patent in dispute involved a distributed learning system including a presenter computer, audience member computers, and a distributed learning server. 44 The district court issued a claim construction order regarding the following claim limitations: graphical display representative of a classroom and first graphical display comprising... a classroom region. 45 The district court also found that the claim limitation, distributed learning control module, invoked the means-plus-function clause under 35 U.S.C. 112(f). 46 Ultimately, the district court examined the specification and concluded that the limitation did not disclose the 38 Id. at Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed. Cir. 2014); see, e.g., Lightning World, 382 F.3d at 1358; Inventio, 649 F.3d at 1356; Flo Healthcare, 697 F.3d at Apple Inc., 757 F.3d at Id. at Id. at 1300; see also Id. at 1303( In sum, the claims at issue differ from those that simply recite a generic means or mechanism, without further description in the remaining claim language or the specification. Instead, the claim language and specification outline the rules that the heuristics follow, based upon, for example, the initial angle of a finger contact, the number of fingers making contact, the direction of movement of a finger contact, a specific swiping gesture, taping a certain location on the screen, or the angle of movement of a finger on the screen. ). 43 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). 44 Id. at Id. at The district court found that the terms required a pictorial map illustrating an at least partially virtual space in which participants can interact, and that identifies the presenter(s) and the audience member(s) by their locations on the map. 46 Id. 6

7 necessary algorithms for accomplishing the functions. 47 The Federal Circuit acknowledged that Lightning World, Inventio, Flo Healthcare, and Apple had established a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word means is not subject to 35 U.S.C. 112(f). 48 However, the court departed from its past holdings: Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as strong the presumption that a limitation lacking the word means is not subject to 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing 112, para. 6 and has resulted in a proliferation of functional claiming untethered to 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as strong. We also overrule the strict requirement of a showing that the limitation essentially is devoid of anything that can be construed as structure. 49 The court adopted the following standard when considering whether a limitation expressed in functional language without using the word means overcomes the presumption that the limitation is not subject to 35 U.S.C. 112(f): The standard is 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. When a claim term lacks the word means, the presumption can be overcome and 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. 50 The court applied this new standard and found that the distributed learning control module limitation fails to recite sufficiently definite structure and that the presumption against meansplus-function claiming is rebutted. 51 The court reasoned that module is a generic term similar to mechanism, element, device, and other words that do not demonstrate a sufficiently definite structure Id. 48 Id. at 1349; see, e.g., Lightning World, 382 F.3d at 1358; Inventio, 649 F.3d at 1356; Flo Healthcare, 697 F.3d at 1374; Apple, 757 F.3d at Id. 50 Id (quoting Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000); see Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). 51 Williamson, 792 F.3d at Id. at

8 A. Application of Williamson v. Citrix As mentioned above, the en banc opinion in Williamson v. Citrix marked a paradigm shift in how 35 U.S.C. 112(f) would be applied in future cases. The majority opinion altered the standard from a strong presumption against applying 35 U.S.C. 112(f) to claim limitations not using the word means, to investigating whether the language of the claim is understood by those who have ordinary skill in the art to have a sufficiently definite meaning as the name for structure. 53 Judge Reyna and Judge Newman, both expressed their concerns with the court s outlandish ruling in their dissenting opinions. Judge Reyna was alarmed that the majority moved away from the well-established means-plus-function test that asks: is the element expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof. 54 Judge Newman was even more so concerned, beginning her dissent with a clear message to the majority that the opinion in Williamson has overruled dozens of cases and has effectively countermanded the statutory language of 35 U.S.C. 112(f). 55 For Judge Newman, the statutory language is clear, leaving no ambiguity as to how a claim is going to be interpreted. 56 Judge Newman argues that the examiner must guess whether the term is intended as a means-plus-function term, now that the court holds that the signal means for need not be used. Paragraph 6 has morphed from a clear legal instruction into a litigator's delight. 57 Furthermore, according to Judge Newman, the permitting of the means signal without a strong presumption of significance will result in legal uncertainty. 58 Although the ramifications of the en banc opinion in Williamson might not be readily apparent, it is conceivable that the inconsistency in legal standards regarding the applicability of the means-plus-function test could cause difficulty for patent applicants. Because of the discrepancy in legal standards, the patentee s intent, whether it is to invoke 35 U.S.C. 112(f) or otherwise, is in essence determined by the court. As a result, when applying for a software or electrical arts patent it will be even more important for patent applicants to judiciously draft their claims and specifications due to the possibility of violating the definiteness requirement of 35 U.S.C. 112(b) See supra note Supra note 13; see Williamson, 792 F.3d at 1356 (Reyna, J., concurring-in-part, dissenting-inpart). 55 Williamson, 792 F.3d at 1358 (Newman, J., dissenting). 56 Id. 57 Id. at Id U.S.C. 112(b) (2012) (stating [t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. ); see also In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (Although paragraph six statutorily provides that one may use means-plus-function language in a claim, one is still subject to the requirement that a claim particularly point out and distinctly claim the invention. Therefore, if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second 8

9 1. Algorithms & 112(b) and (f) In Aristocrat, the Federal Circuit established that a computer-implemented means-plusfunction term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm. 60 At issue was whether Aristocrat s patent disclosed structure that is used to accomplish the claimed function. 61 The court held that the functional claims lacked sufficient disclosure of structure under 35 U.S.C. 112(f), and therefore, were indefinite under 35 U.S.C. 112(b). The court reasoned that there was no algorithm disclosed at all concerning the control means, and it is generally known that cases involving a computer-implemented invention where means-plus-function claiming is invoked, the structure disclosed in the specification must be more than a general purpose computer or microprocessor. 62 Had there been an algorithm, the court would look for the algorithms in the specification to disclose adequate defining structure to render the claim understandable to one of ordinary skill in the art. 63 Additionally, in Noah Systems, the Federal Court distinguished two types of cases involving special purpose computer-implemented means-plus-functions claims: (1) cases where the specification discloses no algorithm; and (2) cases where the specification does disclose an algorithm but the defendant argues that disclosure is insufficient. 64 The court held that, where a disclosed algorithm supports some, but not all, of the functions associated with a means-plusfunction limitation, we treat the specification as if no algorithm has been disclosed at all. 65 The court reasoned that the algorithm requirement is necessary because general purpose computers can perform a plurality of tasks in various different ways, and one of ordinary skill in the art cannot understand the scope of the invention PTAB Decisions Involving Algorithms & 112(b) and (f) The PTAB published informative opinions to shed more light on the legal standards surrounding means-plus-function claim language under 35 U.S.C. 112(b) and (f). paragraph of section 112. ); see also MPEP, supra note (Two separate requirements are set forth in 35 U.S.C. 112(b) and pre-aia 35 U.S.C. 112, second paragraph, namely that: (A) the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and (B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.) 60 Aristocrat Techs. Austrl. Pty Ltd. v. Int l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). 61 Id. at Id. at Id. at 1337 (quoting AllVoice Computing PLC v. Nuance Communications, Inc., 504 F.3d 1236, 1245). 64 Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012). 65 Id. at Id. (citing Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1341). 9

10 In Ex Parte Erol, the claims in dispute involved techniques used to identify objects from digital media and subsequently compared them to objects by a machine readable identifier. 67 The PTAB found that the term processor was a nonce word triggering 35 U.S.C. 112(f) and that the specification did not disclose sufficient structure, in the form of a general purpose processor and an algorithm... as required by Aristocrat The PTAB notes that an algorithm must transform a general purpose computer or processor to a special purpose processor programed to perform the disclosed algorithm, and the applicant can express the algorithm in any way that will provide sufficient structure, including a mathematical formula or flow chart. 69 The PTAB reasoned that the term processor is non-structural and would not be understood by one skilled in the art as having sufficiently definite structure. 70 Accordingly, the PTAB also found that the claim was indefinite. 71 In Ex Parte Smith, the PTAB noted the absence of the word means which creates a strong, but rebuttable, presumption that the inventors did not intend for the processor limitation to trigger 35 U.S.C. 112(f). 72 The PTAB found that the lack of a structural modifier with the term processor, was more evidence that the term is a nonce word. 73 Furthermore, the PTAB held that the algorithm and description in the specification merely reiterate the claimed functions without explaining how the processor ensures that the functions are executed Post Williamson v. Citrix It is important to know where we are coming from to see where we are headed. The cases mentioned above exemplify the thin line between functional and structural claims in electronic art and software cases. Williamson adds complexity in an area of law where interpretation is highly susceptible to subjectivity. Although Williamson was recently decided, there have been many cases citing the en banc opinion and maintaining its controversial legal standard. 67 Ex Parte Erol, No , at 9 (P.T.A.B. March 13, 2013). 68 Id. (citing supra note 59). 69 Id. at 13 (defining an algorithm as a finite sequence of steps for solving a logical or mathematical problem or performing a task; quoting Microsoft Computer Dictionary, Microsoft Press (5 th ed. 2002)). 70 Id. at Id. at Ex Parte Smith, No , at 13 (P.T.A.B. March 14, 2013). 73 Id. at Id. at 19 ( Even if the five steps shown in the flow chart could be understood as corresponding to the five functions ascribed to the claimed processor and the opinion timeline engine could be understood to be the claimed processor, the flow chart and accompanying description in the Specification simply restate the claimed functions without conveying to an ordinarily skilled artisan how the processor ensures that the functions, including the function generate an opinion timeline, are performed. ). 10

11 In E2E Processing, the patent in dispute involved a system method for end-to-end transaction processing and statusing The district court acknowledged the overruling of Lightning World and stated the new standard: [W]hether 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. When a claim term lacks the word means, the presumption can be overcome and 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. 76 The court held that the disputed limitations adapter component and integration component had sufficient structural meaning reasoning that the specification provides context as to how the adapter and integration component interacts with other components in a way that imparts structure. 77 In Smartflash, the parties were in dispute as to whether the ruling in Williamson warranted a reconsideration of the district court s findings that certain code and processor terms were not means-plus-function terms. 78 The court found that the terms processor and code were distinguishable from the world module in Williamson because Apple s own expert stated that the word processor connotes structure to a person skilled in the art as a programmable general purpose processor that can carry out functions. The court held that Williamson did not warrant a modification to the original decisions and conclusions challenged by Apple. Another case involving Apple, Voice Domain Tech., was a patent infringement suit regarding voice recognition technology. The court found that coupling mechanism for... and microphone interpretation mechanism which... were means-plus-function limitations subject to analysis under 35 U.S.C. 112(f). 79 Construing a means-plus-function claim term involves two steps. First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs the function. 80 The court held that the coupling mechanism for... had a corresponding structure disclosed in the specification. 81 On the other hand, the court held that the microphone interpretation 75 E2E Processing, Inc. v. Cabela s Inc., No. 2:14-CV-36-JRG-RSP, 2015 WL , at *1 (E.D. Tex. July 2, 2015). 76 Id. at *4 (citing supra note 41). 77 Id. at *7. 78 Smartflash LLC v. Apple Inc., No. 6:13-CV-447-JRG-KNM, 2015 WL , at *3 (E.D. Tex. July 7, 2015). 79 Voice Domain Techs., LLC v. Apple Inc., No , 2015 WL , at *5. (D. Mass. Aug. 4, 2015). 80 Id. at *9 (quoting Noah, 675 F.3d at 1311). 81 Id. at *8. 11

12 mechanism which... is indefinite because the specification did not disclose adequate corresponding structure. 82 IV. Conclusion With the new legal standard lowering the bar of presumption against the implementation of 35 U.S.C. 112(f), practitioners and patentees have to be wary to ensure that there is equilibrium between structural support and functional language in their patent applications. Computer software and electrical art inventions are going to embark on a more difficult path to patentability considering the inherent functionality in those types of innovations. Furthermore, when drafting software applications, practitioners should always include an algorithm and provide sufficient structure to allow for the transformation of a computer or processor into one having special purpose. The en banc decision in Williamson effectively abandoned the strong presumption against the use of 35 U.S.C. 112(f) when means is not used. Amid this new low threshold, the invalidation of claims as indefinite seems to be a trend that courts and the PTAB are following when a claim triggers a 35 U.S.C. 112(f) analysis. A patent applicant trying to avoid language that would prompt a 35 U.S.C. 112(f) analysis, has a higher burden. Of course, regardless of the intent, the disclosure should always contain structural elements that describe how the components will work in aggregate to perform the function. Furthermore, being that the new legal standard looks to 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, it is essential to draft specifications and claims so that terms have sufficiently definite structure and are understood by those skilled in the art. 82 Id. at *12. 12