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