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American Intellectual Property Law Association

Recent Developments in Recent Developments in U.S. Patent Claim Drafting:U.S. Patent Claim Drafting:

“Means plus Function” claims “Means plus Function” claims

Tom EngellennerAIPLA Presentation to the

Japanese Intellectual Property Association (JIPA)

Tokyo

April 11, 2013

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Means Plus Function Claims - Overview

Section 112 Paragraph 6 of the US Patent LawsThe origin of “means plus function” claims

Interpretation of Means Plus Function ClaimsThe Doctrine of EquivalentsThe Scope of Means plus Function claimsWhen is an element a § 112, ¶ 6 element?

Recent Cases

Conclusions

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A reaction to a Supreme Court decision

Halliburton Oil Well Cement Co. v. Walker (1946):

The patent in suit disclosed a resonator for tuning a receiver to particular frequency but claimed it as a "means ... for tuning said receiving means.” The Supreme Court in 1946 ruled that it was impermissible to describe "[ the] most crucial element in the 'new' combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.”

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§112, Paragraph 6 of the 1952 Patent Law

Means plus function claims explicitly allowed

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.

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The Doctrine of Equivalents

Means plus function claims are treated differently

The Doctrine of Equivalents can expand a claim limitation to cover equivalents if the function-way-result test is met.

§ 112, ¶ 6 appears to do the same but . . . not really.

"an equivalent structure under § 112 ¶ 6 must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.” Welker Bearing v. PhD, Inc. (Fed. Cir. 2008)

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When is an element a §112 ¶6 means?

When a claim uses the term “means” there is a presumption that “means plus function” under § 112, ¶ 6 applies and if “means” is not used, one presumes § 112, ¶ 6 does not apply.

This presumption can be overcome if the term only recites function without reciting sufficient structure for performing that function. Terms like “mechanism” or “element” can be suspect in the regard.

Conversely, a “means” can avoid § 112, ¶ 6 category if the element does connote structure.

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Example

US Patent 4,500,919, “Colorant Selection Systems,” owned by MIT and licensed to Electronics for Imaging (EIF).

In 2002, EIF sued 214 defendants in E.D. Texas – all but four settled.

Following a Markman hearing, the parties stipulated to a verdict for the defendants with plaintiffs preserving their right to appeal.

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MIT v Abacus Software 462 F 3d 1344

a scanner for producing from said color original a set of three tristimulus appearance signals dependent on the colors in said original.

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Holding: A scanner should not be construed as a “means plus function” limitation because the term “scanner” has a recognized meaning in the art.

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aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals.

Holding: the term “circuitry” should not be construed as a “means plus function” limitation because “the term ‘circuitry,’ by itself connotes structure.

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MIT v Abacus Software 462 F 3d 1344

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colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals . . . .

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MIT v Abacus Software 462 F 3d 1344

Holding: although the term “mechanism” benefits from the presumption that it is not a “means plus function” limitation, the presumption is overcome because the term does not connote sufficient structure.

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Icon Health & Fitness v. Octane Fitness11

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Icon Health & Fitness v. Octane Fitness12

Icon sued Octane for infringement of US Patent 6,019,710. The claims recited

“a pair of stroke rails … hingedly connected to a corresponding foot rail; and

means for connecting each stroke rail to the frame such that linear reciprocating displacement of the first end of each stroke rail results in displacement of the second end of each stroke rail in a substantially elliptical path . . .

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Icon Health & Fitness v. Octane Fitness13

Holding: “means for connecting” was a “means plus function” limitation and the doctrine of equvalents could not be read to encompass non-linear mechanisms that performed the same function.

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Flo Healthcare v. Kappos14

This case was an appeal from an inter partes reexamination proceeding on US Patent 6,721,178. At issue was the term: “height adjustment mechanism for altering the height of the horizontal tray.”

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Flo Healthcare v. Kappos15

Holding: The Board erred in finding the term height adjustment mechanism to be a means plus function limitation.

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Flo Healthcare v. Kappos16

“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.”

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“Definiteness” is required by §112, ¶6

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.

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35 US Code 112, ¶s 1 and 2

(a) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . .

(b) The specification shall conclude with [ ] claims particularly pointing out and distinctly claiming the subject matter . . . .

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Ergo Licensing v. CareFusion

Ergo sued CareFusion for infringement of US Patent 5,507,412 that claimed IV infusion systems that metered and simultaneously delivered fluids from multiple sources. At issue was whether the terms “control means” and “programmable control means” were indefinite:

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Ergo Licensing v. CareFusion

Holding: the terms “control means” and “programmable control means” were indeed indefinite:

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The “control means” at issue in this case cannot be performed by a general-purpose computer without any special programming. The function of “controlling the adjusting means” requires more than merely plugging in a general-purpose computer. Rather, some special programming would be required . . . .

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The Dissent in the Ergo Licensing case

Judge Newman took issue with the majority’s finding that the term “control means” was indefinite. She noted that the specification of this patent was no different than thousands of other patents on computer assisted procedures:

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“No party disputed that a person of ordinary skill in the field of metering systems could routinely instruct the control device how to perform the described control. . . .The correct focus is whether one skilled in the art would have understood [the] structure capable of performing the function recited in the claim limitation.”

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Lighting Ballast Control v. Universal

Lighting Ballast Control sued Universal Lighting Technologies on U.S. Patent 5,436,529. At issue was whether a “voltage source means” was a “means plus function” limitation.

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voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals

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Lighting Ballast Control v. Universal23

Holding: “We hold that the ’529 Patent fails to disclose structure capable of “providing a constant or variable magnitude DC voltage between the DC input terminals.”

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Lighting Ballast Control v. Universal24

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“A patentee may use a generic “means” expression to describe a claim element, but the applicant must indicate in the specification what structure constitutes the means. . . A patent must point out and distinctly claim the invention.”

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Conclusions

• Avoid using the term “means” unless you really want the element to be interpreted under § 112, ¶ 6.

• Even if you use a different term (like “mechanism”) avoid describing the element solely in terms of its function.

• Whether or not you want an element to be interpreted under § 112, ¶ 6, make sure there is a corresponding structure. Every element of the claims should be shown in the drawings and enabled. A “controller” should be supported by a description of a mathematical formula, a flow chart or a discussion of the programming steps.

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Case citations and helpful resources

MIT v. Abacus Software, 462 F. 3d 1344 (2006) Ergo Lighting v. Carefusion, CAFC Decision 2011-1229 Flo Healthcare Solutions v. Kappos, CAFC Decision 2011-1476 Icon Health & Fitness v. Octane Fitness, CAFC Decision 2011-1521 Lighting Ballast Control v Universal Lighting, CAFC Decision 2012-1014 USPTO Training Materials: http://www.uspto.gov/patents/law/exam/supp_112_exr_training_exs.pdf

Evan Finkel, Means-Plus-Function Claims in Light of Donaldson and Other Recent Case Developments , 10 Santa Clara Computer & High Tech. L.J. 267 (1994). Available at: http://digitalcommons.law.scu.edu/chtlj/vol10/iss2/1

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Thank you -- ありがとうございます

Tom Engellenner

Pepper Hamilton, LLP

125 High Street

Boston, MA 02110

617-204-5189

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