Download Engellenner Means Plus Function

American Intellectual Property Law Association
Recent Developments in
U.S. Patent Claim Drafting:
“Means plus Function” claims
Tom Engellenner
AIPLA Presentation to the
Japanese Intellectual Property Association (JIPA)
Tokyo
April 11, 2013
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Means Plus Function Claims - Overview
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
Section 112 Paragraph 6 of the US Patent Laws
The origin of “means plus function” claims

Interpretation of Means Plus Function Claims
The Doctrine of Equivalents
The Scope of Means plus Function claims
When is an element a § 112, ¶ 6 element?

Recent Cases

Conclusions
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A reaction to a Supreme Court decision
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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
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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
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Means plus function claims are treated differently
The Doctrine of Equivalents can expand a claim
limitation to cover equivalents if the function-wayresult 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?
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 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
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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
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 a scanner for producing from said color original a set of
three tristimulus appearance signals dependent on the
colors in said original.
 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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MIT v Abacus Software 462 F 3d 1344
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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 . . . .
 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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AIPLA
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Icon Health & Fitness v. Octane Fitness
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AIPLA
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Icon Health & Fitness v. Octane Fitness
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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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AIPLA
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Icon Health & Fitness v. Octane Fitness
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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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AIPLA
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Flo Healthcare v. Kappos
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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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AIPLA
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Flo Healthcare v. Kappos
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Holding: The Board erred in finding
the term height adjustment
mechanism to be a means plus
function limitation.
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AIPLA
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Flo Healthcare v. Kappos
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“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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AIPLA
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“Definiteness” is required by §112, ¶6
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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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AIPLA
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35 US Code 112, ¶s 1 and 2
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 (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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AIPLA
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Ergo Licensing v. CareFusion
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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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AIPLA
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Ergo Licensing v. CareFusion
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Holding: the terms “control means” and “programmable
control means” were indeed indefinite:
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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AIPLA
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The Dissent in the Ergo Licensing case
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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:
“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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AIPLA
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Lighting Ballast Control v. Universal
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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.
voltage source means providing
a constant or variable magnitude
DC voltage between the DC
input terminals
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AIPLA
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Lighting Ballast Control v. Universal
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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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AIPLA
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Lighting Ballast Control v. Universal
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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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AIPLA
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Conclusions
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•
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.
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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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AIPLA
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Case citations and helpful resources
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 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 20121014
 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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AIPLA
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Thank you -- ありがとうございます
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Tom Engellenner
Pepper Hamilton, LLP
125 High Street
Boston, MA 02110
617-204-5189
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