Posts Tagged: "functional claiming"

The United States Court of Appeals for the Federal Circuit decided on October 3 to affirm the ruling by the United States District Court for the District of Delaware that the asserted claims of U.S. patent number 7,774,911 are directed to patent ineligible subject matter under Section101. Much has been written about the majority and dissenting opinions. Here, we concentrate on what the patent practitioner can do when drafting a patent application in light of the case. Whether one personally agrees or disagrees with the court ruling, and there are interesting comments in the dissent about both claim limitations and legal principles, the lessons from the court ruling are clear.

In claim construction analyses, the plain and ordinary meaning of a claim term will not be narrowed by statements in the prosecution history, unless those statements clearly and explicitly evidence the patentee’s intent to depart from the full scope of the claim. If a dependent claim includes the purportedly disclaimed subject matter and was added at the time of the purportedly disavowing statements, a finding of disavowal is unlikely. Furthermore, a means-plus-function term should clearly and objectively define the function of the limitation; if the function is a subjective term of degree, a finding that the term is indefinite is likely.

Because it is clear when infringement occurs, and the scope of the claims is reasonably certain, the Court reversed the judgment of invalidity due to indefiniteness… Claims having functional elements are not indefinite, as encompassing both an apparatus and a method, if they make clear whether infringement occurs upon creating the apparatus or upon its use. A claim with functional language clearly tied to a structure that defines its capabilities is an apparatus claim; such functional language does not make the claim indefinite by also claiming a method of use.

MindGeek and Playboy filed an IPR petition. The Board determined that § 112 ¶ 6 did not apply because “‘wireless device means’ is not purely functional language, but rather is language that denotes structure.” In the alternative, Skky argued that the “wireless device means” term should be construed to require multiple processors or a specialized processor. The Board found Skky’s alternative argument unconvincing. The claims were held invalid in light of prior art that disclosed a “wireless device means,” specifically a cell phone. Skky appealed.

In this issue of the Federal Circuit Review: (1) A Patent Owner Must Show They Are Entitled to Amended Claims In an Inter Partes Review, Including in View Of All Prior Art of Record, and Known to the Patent Owner; (2) Federal Circuit Reverses Every E.D. Va. Claim Construction on Appeal in TomTom v. Adolph Mobile Tracking System Suit; and (3) Federal Circuit Overrule the “Strong Presumption” Embodied in § 112 para. 6 for Functional Limitations Expressed Without the Term “Means.”

The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to perform the function, the court searched for an algorithm for performing the function, but did not find one. The court rejected Williamson’s argument that the distributed learning control module controls communications among the various computer systems and that the “coordinating” function provides a presenter with streaming media selection functionality. The disclosures relied upon by Williamson were thought of by the court as merely functions of the distributed learning control module and opined that the specification does not set forth an algorithm for performing the claimed functions.

Functional claim language is increasingly being used by practitioners to capture the metes and bounds of an invention, especially in computer-implemented inventions. Sometimes using functional language in a claim limitation is unavoidable. Functional language does not, in and of itself, render a claim improper. However, as recently experienced in Williamson v. Citrix (en banc) and Robert Bosch, using functional language carries a significant risk of having the claim invalidated as indefinite following a determination that the claim invokes § 112(f) even when the patentee does not intend to have the claim treated under § 112(f).