Posts Tagged: "means-plus-function"

These cases are very important though because they give us the best glimpse yet into understanding the disclosure requirements for software patents that utilize means-plus-function claim language. Understanding this particular aspect of patent drafting may be crucial moving forward given that some believe that means-plus-function claiming may be one way to get at least some patent claim coverage in the wake of Alice. Therefore, given that the extraordinarily strict disclosure requirements mandated by employing means-plus-function claiming, this technique may well be the future for software patents. Certainly adhering to the extreme disclosure requirements in the Algorithm cases will be a best practice moving forward even if you do not employ means-plus-function claiming, and it will likely remain a best practice until some statutory or common law relief from Alice is achieved.

LEMLEY: “I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking… I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent.

Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina would be seen as no exception if not for what happened the very next day — the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. to consider whether to reset the standard of review for claim construction, long recognized as a question of law reviewed de novo on appeal.

When an element is claimed using language falling under the scope of §112, ¶6, the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in means-plus-function element in the claim. As emphasized by the Federal Circuit, “the ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six…, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson, 16 F.3d 1189, 1194 (Fed. Cir. 1994)(en banc); see also, MPEP 2182, 8th Ed. (August 2012). But here, the Federal Circuit held that there was no error in the Board’s reliance on the broadest reasonable interpretation for language appearing in a seemingly means-plus-function claim element.

The Patent Office says that each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. So will this be a free-for-all whereby everyone with an opinion, even an ill-formed opinion not based in fact, will be allowed time to rip the patent system and software patents specifically? There is no way of knowing what will actually happen at these roundtable events, and while patents don’t generally generate protests I have sneaky suspicion that we may see something that we have never seen before, which is an unruly crowd of protesters. Perhaps I am worrying to much, we shall see.

Recently, patent scholar Mark Lemley has renewed attention to software claims under 35 U.S.C. 112, sixth paragraph. Lemley encourages strict application of the algorithm requirement to police software patents and resolve these concerns. Unlike Lemley, I am convinced that the algorithm requirement makes no sense. The problem is not that the concern about broad software claims is unjustified. The problem is that, even if the concern is justified, the algorithm requirement does not solve it. At least, the requirement does not solve the problem in an appropriate way.

In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not exactly but rather known if one were to combine several references. In other words, the predictable and non-unique combination of what multiple references teach would yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious.

The basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill in the art cannot save the disclosure by understanding. Thus, means-plus-function claims are largely valid at the mercy of a federal judge who in all certainty is not one of skill in the art and who likely has an aversion to such claiming techniques because they prefer dealing with tangible structure.

Earlier today the United States Court of Appeals for the Federal Circuit issued a decision in Noah Systems, Inc. v. Intuit, Inc. According to the Federal Circuit the specification of the ’435 patent must contain an algorithm that performs the function associated with the “access means” limitation, otherwise the limitation is indefinite and the claim invalid. Ultimately, the Federal Circuit would determine that the algorithm disclosed was incomplete. This lead the Court to explain that when the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the specification is treated as if it disclosed no algorithm. An incomplete algorithm means no algorithm as all, which means that what one of ordinary skill in the art would understand from the disclosure is no longer relevant. This is where I would depart from the Federal Circuit and think that the law as it relates to means-plus-function claiming of computer software is all wrong. Means-plus-function claims has always been about what someone of ordinary skill in the art would appreciate (see, for example, USPTO 112 guidelines, 76 Fed. Reg. 7162 (9 February, 2011) so why is that not the case with respect to computer software?

All of this might be confusing to a Judge who is unfamiliar with computers, but that is not the test, is it? The question is supposed to be whether it would be confusing to a person of relevant skill in the relevant technology area. Indeed, disclosure sufficient for means-plus-function claiming may be implicit or inherent in the specification if it would have been clear to those skilled in the art what corresponds to the means-plus-function claim limitation. See MPEP 2181 and Atmel Corp. v. Information Storage Devices, Inc. (Fed. Cir. 1999). Indeed, the Federal Circuit in Atmel concluded that the title of the article incorporated by reference in the specification may, by itself, be sufficient to indicate to one skilled in the art the precise structure of the means for performing the recited function. So the focus is supposed to be on one of skill in the art even when interpreting whether the specification provides adequate support for means-plus-function claiming. Nowhere in the majority opinion is it stated that a person of skill in the art would not have known and would have found the claim vague or ambiguous.