Functional Claiming for Mechanical and Electrical Arts

Functional Claiming for Mechanical and Electrical ArtsSurviving 112(f) and Disclosing Functional Basis to Meet Heightened Standard of Review

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Doris Johnson Hines, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, DC

Theresa Stadheim, Patent Attorney, Mueting Raasch Group, Minneapolis, MN

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DisclaimerThese materials are public information and have been prepared solely foreducational and entertainment purposes to contribute to the understanding ofU.S. intellectual property law and practice. These materials reflect only thepersonal views of the joint authors and are not individualized legal advice. It isunderstood that each case is fact-specific, and that the appropriate solution in anycase will vary. Therefore, these materials may or may not be relevant to anyparticular situation. And not all views expressed herein are subscribed to by eachjoint author. Thus, the joint authors, Finnegan, Henderson, Farabow, Garrett &Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs LawFirm) and JONES DAY cannot be bound either philosophically or as representativesof various present and future clients to the comments expressed in thesematerials. The presentation of these materials does not establish any form ofattorney-client relationship with the joint authors, Finnegan, Henderson, Farabow,Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign LegalAffairs Law Firm) or JONES DAY. While every attempt was made to insure thatthese materials are accurate, errors or omissions may be contained therein, forwhich any liability is disclaimed.

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Outline

I. Williamson sets the standardII. Review of the recent decisions and how the courts

have applied Williamson in the electrical and mechanical arts

III.PTO GuidanceIV.Best practices for leveraging §112(f) and functional

claims for maximum patent protection

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What is functional claiming?

35 U.S.C. §112(f) (formerly 112(6):ELEMENT IN CLAIM FOR A COMBINATION.—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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Williamson v. Citrix Online, LLC, 792 F.3d 1339(Fed. Cir. 2015) (en banc) Claim 8. A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:

…a distributed learning control module for receiving communications 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

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Williamson (cont’d)

District Court: Invalid for Indefiniteness. “Distributed learning control module,” was a means-plus-function term.

Specification failed to disclose the necessary algorithms for performing all of the claimed functions.

Federal Circuit: Affirmed.

“To determine whether § 112, para. 6 applies to a claim limitation, our precedent has long recognized the importance of the presence or absence of the word “means.” …the use of the word “means” in a claim element creates a rebuttable presumption that § 112, para. 6 applies.

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Federal Circuit Quotes:

Claim “replaces the term ‘means’ with the term ‘module’ and recites three functions performed by the ‘distributed learning control module.’”

’Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6. …Here, the word ‘module’ does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.

Prefix ‘distributed learning control’ does not impart structure into the term ‘module,’ nor does written description impart any structural significance to the term.

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“Where there are multiple claimed functions, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.”

“Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.”

“Even if the specification discloses corresponding structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function.”

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If a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite.”

“The specification does not set forth an algorithm for performing the claimed functions.”

Newman dissent – adds uncertainty

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Nonce Words

Mystery List A:• – mechanism for • – module for • – device for • – unit for • – component for • – element for • – member for • – apparatus for • – machine for • – system for

Mystery List B:• Circuit for• Detent mechanism• Digital detector for• Reciprocating member• Connector assembly• Perforation• Sealingly connected joints• Eyeglass hanger member

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Nonce Words (cont’d)

Nonce words (invoke paragraph 6) as listed in MPEP 2181:• mechanism for • module for • device for • unit for • component for • element for • member for • apparatus for • machine for • system for

The following terms have been held not to invoke paragraph 6 (as listed in MPEP 2181) :• Circuit for• Detent mechanism• Digital detector for• Reciprocating member• Connector assembly• Perforation• Sealingly connected joints• Eyeglass hanger member

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District Court Cases after Williamson

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How is Williamson being applied by District Courts

After Williamson, courts determine if a claim limitation is in a format consistent with traditional means-plus-function (MPF) claim limitations.

> Does the claim limitation provide or impart any structure to the claimed function being performed.

Once the court establishes that a claim term is drafted in MPF format, construction of the term is the traditional two-step process. Not Dead Yet Mfg. V. Pride Solutions, LLC, 2015 U.S. Dist. LEXIS 135629 (N.D. ILL. Oct. 5, 2015).

> First, the court identifies the claimed function.> Second, the court determines what structure, if any, disclosed in the

specification corresponds to the claimed function.

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“Mechanism” Invokes 112(f)MTD Products Inc. v. Iancu, 933 F.3d 1336 (Fed. Cir. 2019)Generic terms like “module,” “mechanism,” “element,” and “device” are commonly used to claim a particular function rather than describe a sufficiently definite structure.

Further, the claim language reciting that the mechanical control assembly is “configured to” do is functional, favoring that 112(f) applies.

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“Mechanism” Invokes 112(f)MTD Products Inc. v. Iancu, 933 F.3d 1336 (Fed. Cir. 2019)That the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures.

The specification here failed to define the nonce term beyond the broad meaning of the generic term.

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“Mechanism” Does & Does Not Invoke 112(f)Abiomed, Inc. v. Maquet Cardiovascular, LLC, 329 F. Supp. 3d 1 (D. Mass. 2018)

Claim 16:An intravascular blood pump system comprising:

an intravascular blood pump having a cannula coupled thereto,

a guide mechanism adapted to guide said intravascular blood pump and cannula to a predetermined location within the circulatory system of a patient, and

a blood pressure detection mechanism to detect the pressure of the blood proximate at least one of the intravascular blood pump and cannula.

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“Mechanism” Does & Does Not Invoke 112(f)Abiomed, Inc. v. Maquet Cardiovascular, LLC, 329 F. Supp. 3d 1 (D. Mass. 2018)

As for the words “guide mechanism,” “guide” is merely a functional descriptor and “mechanism” is a classic nonce word tantamount to using the word “means.” However, the same is not true for blood pressure detection mechanism.Although pressure sensing is functional in the same way that the term “guide” is, sensing blood pressure is not a core feature of the invention. As such, the blood pressure detection mechanisms added to the core invention do not inherently need to be specified in the same way. Because the specification defined the precise structure of the pressure sensor mechanism in detail, the presumption against applying 112(f) was not rebutted.

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MPEP Section 2181:

The following is a list of non-structural generic placeholders that may invoke 35 USC 112(f) or pre-AIA 35 USC 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”

“Unit” and “Element” Typically Invoke 112(f)

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“Unit” Invokes 112(f)Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed. Cir. 2018)The term “cheque standby unit” fails to recite sufficiently definite structure and recites a function without reciting sufficient structure for performing that function. The claims do not recite any structure—instead, they simply describe the term in relation to its function and location in the invention.

It is not enough that the claims and specification suggest some structure to perform the function of a “cheque standby unit,” but rather the written description and claims must provide sufficiently definite structure.

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“Unit” Does Not Invoke 112(f)Panoptis Patent Mgmt., LLC v. Blackberry Ltd., 2017 WL 497571 (E.D. Tex. Feb. 7, 2017)

Reiterating the holding and reasoning in OPTIS Wireless Tech. LLC v. ZTE Corp., No. 2:15-CV-300-JRG-RSP, 2016 WL 1599478, (E.D. Tex. Apr. 20, 2016), the court found no distinguishing facets between “a determination unit,” at issue in OPTIS Wireless, and a “reception unit” or a “transmission unit.”

The court “expressly reject[ed] . . . that [“unit”] is a means-plus-function term governed by” 112(f) generally—rather, certain “unit” terms are means-plus-function terms governed by the statute.

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Telebrands Corp. v. GMC Ware, Inc.

Claim term: driving element

Does not invoke MPF because the claim required that the driving unit be fixed securely within the axial space of the rotary rod and formed with a central spiral hole.

Other physical limitations in the claim meant that the driving element was “an object configured to rotate and simultaneously cause rotation of another object.

No. 15-03121-SJO, 2016 U.S. Dist LEXIS (C.D. Cal. Aug. 17, 2016)

“Element” Does Not Invoke 112(f)

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“Element” Does Not Invoke 112(f)Syneron Medical Ltd. v. Invasix, Inc., 2018 WL 4696971 (C.D. Cal. Sept. 5, 2018)

Claim term: RF application elements

The Federal Circuit in Williamson explicitly called out “element: as one of those nonce words that typically do not connote sufficient structure. The prefix “RF application” adds little to the term other than specifying its function—it provides no information on the structural character of the elements nor does it impart any structure. And yet, RF application elements connotes a sufficiently definite structure because when read in the context of the remainder of the claim language alongside the specification, it readily connotes structure to a POSITA.

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Verint Sys. v. Red Box Recorders, Ltd., 166 F.3d 364 (S.D.N.Y. 2016).

A recording system for capturing and recording audio data packets transmitted across a data network, comprising:

a data switch operable to receive a plurality of call setup requests, requesting to establish a voice data session between a calling party and a called party, the voice data session comprising audio data packets communicated between a calling party and a called party via a data network;

a monitoring device operable to capture the audio data packets received by the data switch, wherein the monitor is operable to identify a call to which the audio data packets belong, and to associate the audio data packets to a voice interaction session; and

a data store operable to interface with the monitor and to record at least a portion of the received audio data packets to a record associated with the voice interaction session.

“Device” Invokes 112(f)

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Verint Sys. v. Red Box Recorders, Ltd.

The term “monitoring device” invoked MPF treatment and failed to provide sufficient structure.

The term “device” is a nonce term that was operative to perform three functions:

To capture the audio data packets… To identify a call… To associate the audio data packets to a voice interaction session

“Device” Invokes 112(f)

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“Device” Invokes 112(f)The claims recite computer-implemented functions, but the specification did not provide an algorithm for all the functions of the monitoring device.

Reliance on the Summary of the Invention, which stated the claimed functions in a “conclusory manner”, was insufficient disclosure of an algorithm for the “identify” function.

Reliance on identical portions of the specification as supporting the “identify” and “associate” functions evidenced that the patent lacked a description of how the device would perform the claimed monitoring.

The term ‘monitoring device’ did not appear anywhere in the specificationmuch less with an associated algorithm. “The failure to even reference this device in the specification raises enough doubt about whether a person of ordinary skill in the art could understand what structure corresponds to the means limitation.”

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“Device” Does Not Invoke 112(f)

Intelligent Water Sols., LLC v. Kohler Co., 2017 WL 2444723 (E.D. Tex. June 5, 2017)Claim term: remote system monitoring / control device

Although the term included a recognized generic term, the context of its limitations recites sufficiently definite structure. A modifier added to a nonce term can prevent the term from being construed as a means-plus-function element by further narrowing the scope of those structures covered by claim, thereby making it more definite.

Here, the subsequent language in the claims, alongside the specification, described how the device operates within the claimed invention to achieve its objectives. This was sufficient for supporting that 112(f) did not apply.

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Verint Sys. v. Red Box Recorders, Ltd., (S.D.N.Y)

A system to manage communications over a communications network that includes an exchange, the system comprising:

a monitoring device configured to connect the system to the communications network and to receive data packets from the communications network;

an analysis module configured to receive an identifier tagged onto the data packets so as to identify the data packets, such that the identified data packets form at least a portion of the traffic stream and that data packets are selected data packets;

. . .

“Module” Invokes 112(f)

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The term “analysis module” involves the term “module” which was the exact nonce word at issue in Williamson, and that by adding the term “analysis” imparts no structure just as adding “distributed learning control” failed to do so in Williamson.

The analysis module “is a black box nonce term that performs a function consistent with the format of MPF claiming” because it is configured to perform a single function (e.g., receive an identifier tagged onto the data packets…)


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Patentee’s reliance on a technical dictionary “reveals a lack of structure in the specification.” Patentee attempted to impart structure into the claim by arguing that the

“‘analysis module’ contains inherent structure because the term ‘data analysis’ is defined in a technical dictionary as the ‘systematic investigation of data and their flow in a real or planned system.’”

Court: the “immediate resort to a technical dictionary for an entirely different term reveals the lack of structure in the specification… crediting the definition of ‘data analysis’ as the definition for the added term ‘analysis’still only describes the claimed function at a high level but fails to offer corresponding structure…”


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The court reviewed the specification and did not find an algorithm performing the analysis module’s functions or steps.


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Metaswitch Networks Ltd. v. Genband USA LLC

A system for interfacing telephony voice signals with a broadband access network, comprising:

a plurality of telephony port modules each operable to receive telephony voice signals, each of the plurality of telephony port modules including one or more digital signal processors, each digital signal processor operable to perform one or more processing functions on the telephony voice signals, wherein each of the plurality of telephony port modules may transfer a received telephony voice signal to any digital signal processor on any of the plurality of telephony port modules.

No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *38 (E.D. Tex. Aug. 10, 2015)

“Module” Does Not Invoke 112(f)

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The claims recite the telephony port modules “including one or more digital signal processors” or “including a plurality of digital signal processors.”

The reference to a ‘port’ connotes structure known in the art, relying on Dictionary of Computer Science Engineering & Technology, Newton's Telecom Dictionary; Phillips, 415 F.3d at 1318 (“We have especially noted the help that technical dictionaries may provide to a court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms.”)

Metaswitch Networks Ltd. v. Genband USA LLC, No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *39 (E.D. Tex. Aug. 10, 2015)

“Module” Does Not Invoke 112(f)

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Same case: different claim

A gateway system for interfacing telephony signals with a broadband access network, comprising:

an access network module operable to interface with the broadband access network;

at least one telephony port module operable to interface with a public switched telephone network, the telephony port module including a plurality of digital signal processors operable to perform processing functions on telephony signals received from either the broadband access network or the public switched telephone network;

a system controller module operable to manage a flow of telephony signals between the access network module and the telephony port module, the telephony port module operable to assign telephony signals to any digital signal processor of the telephony port module.


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Unlike the term “telephony port module,” the term “access network module” is not recited in the claim in association with any distinct structure, and the term does not modify the word “module” with any language that imparts structure.

In particular, the phrase “access network” merely refers to a broadband network.

The term “access network” module is therefore construed as a means-plus-function term

Metaswitch Networks Ltd. v. Genband USA LLC, No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *40 (E.D. Tex. Aug. 10, 2015)


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Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D. Va Feb. 2016)

Claim term: switching system for selectably and independently coupling and decoupling the processing logic with the first storage and/or the second storage under automated control

A plain reading of the claim demonstrates that the patentee substituted the word ‘system’ for the word ‘means’ and then describes the function of the claimed system.

“System” Invokes 112(f)

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Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D.Va Feb. 2016)

Relying on Williamson, the court found 112(f) applied because ‘a generic description for software or hardware that performs a specified function’ does not impart sufficient structure.

All was not lost: the court concluded that Figs 2 and 3 show the corresponding structure, “encompassing hardware, software, or a combination of the two.”


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Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D.Va Feb. 2016)


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“Processor” Invokes 112(f)GoDaddy.com, LLC v. RPost Commc'ns Ltd.,

Claim term: a processor for associating the content data with dispatch record data which includes at least said time related indicia and an indicia relating to the destination of the dispatch, to generate authentication data which authenticate[s] the dispatch and the contents of the dispatch

GoDaddy.com, LLC v. RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016)

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“Processor” Invokes 112(f)

“Although the Court concludes that the term ‘processor’ connotes at least some structure, this does not end the Williamsonanalysis.”

“The Court first reviews how one skilled in the art would understand ‘processor’ as used in Claim 82.”


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“Processor” Invokes 112(f)Based on a review of dictionary definitions, the Court concludes that a skilled artisan would not recognize “processor” as a name of a sufficiently definite structure for “associating” two distinct types of data in order to “generate” a third class of data. Rather, one skilled in the art would understand “processor” to mean a general purposecomputer, a central processing unit (“CPU”), or a program that translates another program into a form acceptable by the computer being used.


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“Processor” Invokes 112(f)The Court concludes that “associating” two sets of data in order to “generate” a third set of data is not a typical function found in a general purpose processor and requires additional programming of the processor to implement. Accordingly, the claimed “processor” alone is not sufficient structure to perform the claimed functions.


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“Processor” Does Not Invoke 112(f)

Align Tech., Inc. v. 3Shape, 2021 WL 2320139 (D. Dela. June 7, 2021)

A processor coupled to the detector unit and configured to determine a surface topology of the patient's dentition based at least in part on a first intensity of a first returned light beam of the first wavelength component and a second intensity of a second returned light beam of the second wavelength component . . .

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“Processor” Does Not Invoke 112(f)

Align Tech., Inc. v. 3Shape, 2021 WL 2320139 (D. Dela. June 7, 2021)

Align: the language of claim provides sufficient detail of the processor’s structure

3Shape: the “processor” term fails to recite sufficiently definite structure because the claims do not recite the algorithms for performing the claimed function.

Court: agreed with Align; the term, in the context of the rest of the claim language and the specification, connotes sufficient structure and is not a “nonce” word. The question is whether the specification discloses sufficient algorithmic structure corresponding to the term, not whether the claims alone recite sufficient structure.

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Zeroclick LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 1803782 (N.D. Cal. Aug. 16, 2016)

Claim term: user interface code being configured to detect one or more locations touched by a movement of the user's finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation.

“Code” Invokes 112(f)

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Zeroclick LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 1803782 (N.D. Cal. Aug. 16, 2016)

The phrase ‘user interface code’ provides the same ‘black box recitation of structure’ as the word ‘module’ in Williamson, and the claim language provides no additional clarification regarding the structure of the term, the ‘user interface code’ is a means-plus-function term.

“Code” Invokes 112(f)

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“Code” Does Not Invoke 112(f)

Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-CV-1187-JRG-RSP, 2016 WL 3647977, at *18 (E.D. Tex. July 7, 2016)

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“Code” Does Not Invoke 112(f)The claims connote that the “add-on computer software code” is structural by describing how the “add-on computer software code” operates within the claimed invention to achieve its objectives:

For instance, the claim recites that the add-on computer software code runs within the software design tool, inserts specific symbols into a drawing provided by the software design tool, transmits specific symbol data from…

Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-CV-1187-JRG-RSP, 2016 WL 3647977, at *19 (E.D. Tex. July 7, 2016)

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“Code” Does Not Invoke 112(f)Collaborative Agreements, LLC v. Adobe Systems Incorporated, No. 15-cv-03853-EMC, 2015 WL 7753293 (N.D. Cal. December 2, 2015)

• Claim 25 directed to a “code segment”

• Court found “code segment” suggest structure according to dictionary definition• Structure is understood as memory segments (p. 14)

• Claim also recited description of how the “code segment” operates• Structural interactions of code segments is described (p. 14)

• Equated to Linear Tech , which describes circuit interactions

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“Game Controller” Does Not Invoke 112(f)

Konami Gaming, Inc. v. Marks Studios LLC, 2017 WL 3174905 (D. Nev. July 25, 2017)

Does game controller invoke 112(f) when it is a processor-related term? Afterall, a game controller is a programmable processor generally. The answer lies in Williamson.

Comparable to a “distributed learning control module” which sets forth “the same black box” of a generic processor as was at issue in Williamson, here too the patents at issue used the term “game controller” within claim language structured as a means-plus-function claim (without the means) with little detail describing the underlying structure.

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“Game Controller” Invokes 112(f)

Konami Gaming, Inc. v. Marks Studios LLC, 2017 WL 3174905 (D. Nev. July 25, 2017)

a game controller configured to initiate the instance of the game;the game controller being further configured to replace each of the symbols;

compared with

a computer means configured to initiate the instance of the game;the computer means being further configured to replace each of the symbols;

shows that game controller is a substitute for a black box term for carrying out processing functions without any definite structure

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Draft Guidance posted to Federal Register January 7, 2019 (public comments due March 8, 2019)

Examining Computer-Implemented Functional Claim limitations for Compliance with 35 USC 112

Available at: https://federalregister.gov/d/2018-28283

Functional claiming at the PTO

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Draft Guidance, cont’d

Acknowledges that some 35 USC 101 decisions criticized improper functional claiming Electric Power Group Intellectual Ventures v. Symantec


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Part I: examination of computer-implemented functional claims having means-plus-function limitationsPart II: written description and enablement issues


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Part I Determining whether to apply 112(f) is the same as described in

MPEP §2181 Section starts off with short summary of Williamson


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Draft Guidance Part I, cont’d

First step is to determine broadest reasonable interpretation of the claim

Three-prong test from MPEP 2181 will be applied There is no fixed list of generic placeholders that will always

result in 112(f) interpretation (and vice versa)


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Draft Guidance Part I, cont’d

How Examiner is to determine whether word, term, or phrase coupled with a function denotes sufficient structure to avoid 112(f): Look at specification Look at general and subject matter dictionaries Look at prior art evidence that the term denotes

structure


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MPEP 2181: § 112(f) Claims Must Satisfy § 112(b)

112(f) states that a claim limitation expressed in means-plus-function language “shall be construed to cover the corresponding structure…described in the specification and equivalents thereof.”

“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 paragraph of section 112.”

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How Does the USPTO Construe § 112(f)?MPEP

• §2111.01: Plain Meaning: When an element is claimed using language falling under the scope of 35 U.S.C. 112, 6th paragraph . . . the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim.

• § 2114: It should be noted, however, that means plus function limitations are met by structures which are equivalent to the corresponding structures recited in the specification.

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MPEP 2181: How to Satisfy §112(b)

The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means (or step)-plus function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.

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Evaluating § 112(f) Limitations in Software-Related Claims for DefinitenessDiscussed in Draft Guidance as well as post-Williamsontraining

Programmed computer functions require a computer programmed with an “algorithm” to perform the function• An algorithm is a step-by-step procedure for accomplishing a given result

• Can be expressed in various ways “in any understandable terms including as a mathematical formula, in prose or as a flow chart, or in any other manner that provides sufficient structure” (Finisar)

• Amount of disclosure of an algorithm is analyzed on a case-by-case basis

• See also Advance Ground Information Systems

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Evaluating § 112(f) Limitations in Software-Related Claims for DefinitenessThis was also discussed in the Draft Guidance

Two types of computer-implemented functions:

• Specialized functions: functions other than those commonly known in the art, often described by courts as requiring “special programming” for a general purpose computer or computer component to perform the function Ex. means for matching incoming orders with inventory on a pro rata

basis

• Non-specialized functions: functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component Ex. means for storing data

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Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness

The corresponding structure in the specification that supports a § 112(f) limitation that recites a specialized function is:

• A general purpose computer or computer component along with the algorithm that the computer uses to perform the claimed specialized functiono The disclosure requirement under § 112(f) is not satisfied

by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed function (See EON Corp. IP Holdings v. AT&T Mobility)

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Evaluating § 112(f) Limitations in Software-Related Claims for DefinitenessA specialized function must be supported in the specification by the computer or computer component and the algorithm that the computer uses to perform the claimed specialized function

• The default rule for § 112(f) programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function

• Disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope

• “Claiming a processor to perform a specialized function without disclosing the internal structure of the processor in the form of an algorithm, results in claims that exhibit the ‘overbreadth inherent in open-ended functional claims’” (Halliburton Energy Services (emphasis added))

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Real-life prosecution examples

“Security system control panel” a nonce term? “Transcoder” and “bus” nonce words? Argue by pointing out structure in the claims

Argue a backup position (“even assuming 112(f) applies, here is written description in the spec…”

Remove the word module “processor” is often a good substitute if you have support

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Practical Tips in Drafting

Disclosure should show how a computer would perform each function claimed (for computer-implemented claims)

Detailed flow chart, even in non-software specifications Disclose as many embodiments, variants and equivalents as

possible for the invention Include inputs and outputs for each structure in your claim Include structure in claim (if you do not intend 112(6)

treatment)oDescription of memory, ports, etc.oHowever you may want to take advantage of doctrine of

equivalents by providing equivalents in the specification

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No need to avoid functional claiming. Functional claiming allows the drafter to control the scope of the claim (through the specification).

Functional claiming allows the prosecutor to maintain some degree of equivalents for elements amended for reasons of patentability.


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Tips from Rain Computing v. Samsung Claim recited sending “a user identification module

configured to control access” Special programming needed to control this access, so

general purpose computer is not sufficient Need “clear link or association” If general purpose computer make sure there’s an

algorithm (this really turns it into specialized software)


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Tips from Flash-Control v. Intel Not enough to have some sort of structure in the

specification that could perform claimed function Best to describe exact claim language (here, “second

buffer”) directly in the specification just as a backup support

Describe claimed function for those structures as well Can’t pick and choose from embodiments, so your

main claims (at least) should be found in one embodiment (can be seen as linking structures sufficiently)


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Claims: Avoid claiming “black boxes” e.g., modules, units (avoid disclosing) Instead, claim/disclose processors, circuitry, etc. For non-method software claims, one solution may be to claim a

processor executing instructions that when executed perform a function (rather than claiming a “module”)

Consider explicit “means” claim set By claim differentiation, non-"means" claims may not invoke the

statutory construction.

Consider CRM claim set "A computer readable medium storing instructions for executing a

method performed by a computer processor, the method comprising .... “

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Avoid known nonce words when possible so that the burden to overcome presumption will be on the challenger.

If defending a nonce word, argue that the claim describes how the element is interconnected with other elements or otherwise operates.

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Practical Tips in Prosecution

Address Examiner’s application of § 112(f)/¶6

Argue/amend until withdrawn; or Leave claims as-is and add new non-"means" claims

Consider Arguing without Examiner raising

Supplement the “intrinsic” record dictionary definitions expert statements argument

Distinguish various claim sets

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Practical Tips in Prosecution

Over-reliance on modules, units, etc.

Consider reissue to correct potential problems in existing portfolio.

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Practical Tips in General

Be deliberate in your decision to use functional claiming Provide structural/systems/process details in specification for

functional claim recitations: Provide structural/systems/process details in specification for functional

claim recitations Alternative embodiments Multiple examples Varying claim strategies Overlap substantially with Post-Alice eligibility practices

Be straight forward

Documents

Functional Claiming for Mechanical and Electrical Arts