Download Engellenner Means-plus-function Presentation AIPLA MWI 2013

AIPLA
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Recent Developments in
U.S. Patent Claim Drafting:
“Means plus Function” claims
Tom Engellenner
IP in Japan Committee Meeting
AIPLA Mid-Winter Institute 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
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 would appear 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 a claim 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.
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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.
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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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Example
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.
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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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Example
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.
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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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Example
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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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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“Definiteness” is required in §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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Definiteness
A patent claim cannot simply claim a functional result:
. . . “the essence of my invention being the
use of the motive power of the electric or
galvanic current, which I call electromagnetism, however developed for
marking or printing intelligible characters,
signs, or letters, at any distances” . . .
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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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The requirements of §112, Para. 1 and 2
Written description:
Was the claimed invention within the possession of
the inventor at the time of filing?
Enablement:
Could the skilled person construct the invention
based on the specification?
Definiteness:
Is the claim clearly understandable? Is each element
clearly referenced in the specification?
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Icon Health & Fitness v. Octane Fitness
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Icon Health & Fitness v. Octane Fitness
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 Fitness
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.
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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Flo Healthcare v. Kappos
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.”
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. Kappos
“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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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:
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:
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. . .
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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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Lighting Ballast Control v. Universal
voltage source means providing
a constant or variable magnitude
DC voltage between the DC input
terminals
Holding: “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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Lighting Ballast Control v. Universal
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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Conclusions
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Avoid using the term “means” unless you really want the
element to be interpreted under § 112, ¶ 6.
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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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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 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
Tom Engellenner
Pepper Hamilton, LLP
125 High Street
Boston, MA 02110
617-204-5189