Functional Claiming Under U.S. Patent Law
Under U.S. law, uncertainty surrounding functional claim limitations has generated tension due to seemingly contradictory positions taken by both the courts and the Patent & Trademark Office (PTO). Where a claim has no structural elements supporting the functional limitations, the functional limitations may be interpreted as means-plus-function limitations, invoking 35 U.S.C. §112(6). For such claim limitations, interpretation may turn on the corresponding structure disclosed in the patent specification. In some instances, such claim limitations have been treated as invoking § 112(6) even when structurally connected to other components. Validity under § 112 for software-based limitations may turn on whether the specification includes a supporting algorithm. While the PTO and courts have provided some insight in this regard, application of the law has been inconsistent and often turns on highly subjective interpretation of specific terms, which can vary greatly from one case to another.
Recent court decisions have attempted to address these issues. The Robert Bosch, LLC v. Snap-on, Inc. decision provided some insight, explaining that even when § 112(6) is not triggered presumptively by use of “means” language and even when the claim term is claimed as being “connected” to other structure(s), functional characterization of the term can invoke § 112(6):
Although both "program recognition device" and "program loading device" are presumed not to invoke § 112, ¶ 6, we must next turn to the issue of whether this "strong" presumption against means-plus-function claiming is overcome. In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6. The question is whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions. In the latter case, § 112, ¶ 6 then commands a construction of the limitation as referring to specification-identified corresponding structures and their equivalents. See Bosch, LLC, v. Snap-On, Inc., 769 F.3d 1094 (Fed. Cir. 2014).
Accordingly, consideration may be given to aspects in the supporting disclosure that connote structure and that go beyond mere connectivity.
The Bosch decision has been a focus of discussion with regard to interpretation in more recent decisions. For instance, the dissent’s cite to Bosch in Williamson v. Citrix Online, LLC noted that the “district court erred in concluding that ‘distributed learning control module’ is a means-plus-function claim term.” Terms such as "mechanism," "element," "device," and other so-called "nonce" words that reflect verbal constructs were held as being tantamount to the word "means" because they lack definite structure and therefore may invoke § 112, paragraph 6. In this and other contexts, treatment of such terms have followed the direction of the Bosch decision.
These and other aspects can be important considerations in patent drafting, prosecution and litigation. Eric Curtin and Shane Sondreal have published an in-depth article on this subject, via the International In-house Counsel Journal. We encourage you to check out the following link, or contact us for further discussion as to how these aspects may be important for your patent portfolio. https://www.iicj.net/library/detail?key=870
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