Functional Claiming: Guidance from the Courts [Software and Electrical Arts Perspective]
By Nicholas Camillo1 and Sarah Knight2
I. Introduction
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. Citrix7, 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 § 608.01(k) (9th
ed. Mar. 2014) [hereinafter MPEP]; see also Markman v. Westview Instruments, Inc., 517 U.S.
370, 372 (1996).
4
35 U.S.C. § 112(b) (2012); 35 C.F.R. § 1.71 (2013); MPEP, supra note 1, § 608.01(i).
5
69 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
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 1790 § 2, 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 7.
15
Id. at 9.
2
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 112 ¶ 6 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 10-12.
Walker-Jenkinson Co. Inc. v. Hilton Davis Chem. Co. 520 U.S. 17, 27 (1997).
18
Section 112 ¶ 6 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 28.
19
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”).
17
3
“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. § 112 ¶6 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, ¶ 6.”26 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).
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 1375. (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 1376.
24
Id.
25
Personalized Media Communications, LLC v. Int‟l Trade Com‟n, 161 F.3d 696, 703 (Fed. Cir.
1998).
26
Id. at 704.
27
Id.
28
Lightning World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).
21
4
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.”37
29
Id. at 1358 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Lightning World, 382 F.3d at 1358.
31
Id. at 1359.
32
Id. at 1361.
33
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 1359.
35
Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (2012).
36
Id. at 1374.
37
Id (quoting Lightning World, 382 F.3d at 1358).
30
5
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 1375.
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 1374.
40
Apple Inc., 757 F.3d at 1297.
41
Id. at 1298.
42
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 1343.
45
Id. at 1345. 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.
39
6
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.52
47
Id.
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 1297.
49
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 1351.
52
Id. at 1350.
48
7
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).59
53
See supra note 48.
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 1362.
58
Id.
59
35 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
54
8
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.66
2. 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 1 § 2171 (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 1336.
62
Id. at 1333-1337.
63
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 1318.
66
Id. (citing Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1341).
9
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 . . . .”68 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.70Accordingly, 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.74
3. 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. 2011-001143, at 9 (P.T.A.B. March 13, 2013).
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 (5th ed. 2002)).
70
Id. at 18.
71
Id. at 19.
72
Ex Parte Smith, No. 2012-007631, at 13 (P.T.A.B. March 14, 2013).
73
Id. at 15.
74
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.”).
68
10
In E2E Processing, the patent in dispute involved “a system method for end-to-end
transaction processing and statusing. . . .”75 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 4051423, 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 4208754, at *3 (E.D.
Tex. July 7, 2015).
79
Voice Domain Techs., LLC v. Apple Inc., No. 15-40138, 2015 WL 4638577, at *5. (D. Mass.
Aug. 4, 2015).
80
Id. at *9 (quoting Noah, 675 F.3d at 1311).
81
Id. at *8.
11
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