Means-plus-function language in claims can be a helpful tool for patent practitioners, such as in computer-related technologies. However, if the patent practitioner is not careful in drafting the specification and claims, numerous traps await in what seems to be constantly evolving decisions from the Federal Circuit. Even if the patent practitioner is careful in following current precedent, it may be discovered many years later that such claims fail for some unforeseen reason. Such an unforeseen reason is illustrated in a recent non-precedential decision from the Federal Circuit, In re Avid Identification Systems, Inc., 2013 U.S. App. LEXIS 438 (Fed. Cir. 2013).
In Avid, the Federal Circuit apparently creates a new first step in determining whether 35 USC §112, 6th paragraph (pre-AIA) applies, i.e., whether the inventor/patentee first argues for its application. This new first step seems to conflict with prior precedent set forth in In re Donaldson.
Avid’s patent 5,499,017 (the ‘017 Patent) has claim 1 reciting “a means for permanently storing data in an unalterable fashion….” A patent practitioner would presumably recognize this phrase as a means-plus-function element. On appeal after a reexamination decision of invalidity over cited prior art, neither the inventor nor the Board of Appeals and Interferences (“Board”) explicitly addressed the application of §112, ¶6. Instead, the Board applied the “broadest reasonable interpretation” to “unalterable” data. The Federal Circuit agreed with the Board’s use of “broadest reasonable interpretation” and did not analyze the claimed “means for permanently storing” under §112, ¶6. What happened to the Federal Circuit’s holding in In re Donaldson chastising the PTO for incorrectly applying the broadest reasonable interpretation instead of applying the statutorily mandated interpretation of §112, ¶6 for a means-plus-function claim element?
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.
Generally, the first step in analyzing a means-plus-function limitation is to determine whether §112, ¶6 applies. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). There is a rebuttable presumption that §112, ¶6 applies when the inventor used the phrase “means for.” Inventio AG v. Thyssenkrup Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011); York Prods. Inc. v. Central Tractor, 99 F.3d 1568, 1574 (Fed. Cir. 1996). Avid’s “means for permanently storing” should have triggered such a rebuttable presumption for application of §112, ¶6. But the Federal Circuit does not even get that far. The Federal Circuit apparently creates a new “first” step in analyzing a means-plus-function limitation – whether the inventor/patentee explicitly argues for application of §112, ¶6. This is the only difference between Avid’s case and In re Donaldson. Here, the inventor/patentee never explicitly argued for application of §112, ¶6. The inventor did in In re Donaldson.
During the prosecution of the reexamination, the appellant repeatedly made reference to the meaning of the disputed term by reference to disclosures in the specification, but the appellant never explicitly argued that §112, ¶6 applied. Perhaps the appellant had assumed that the Board was analyzing the claim terms under §112, ¶6 as required by In re Donaldson. The majority opinion, however, dismissed Avid’s argument because Avid did not fully raise this point at the Board, stating “appellant cannot prevail by arguing alleged technical flaws in the PTO’s procedure when it has itself failed to comply with its own procedural obligations.” Apparently, meeting “procedural obligations” includes not only pointing out the disclosures in the specification in support of the corresponding structures as Avid had done, but also explicitly arguing that §112, ¶6 applies.
As Judge Clevenger points out in dissent, there are many instances where the Board sua sponte applies §112, ¶6 even when the issue is not previously raised by the inventor or by the examiner. Avid, *21, n.2. And, if there is some insufficiency in the disclosure of corresponding structure for the means-plus-function element, the claimed element could be deemed indefinite under 35 USC §112, second paragraph (pre-AIA). So, what is really going on here?
Perhaps, the Federal Circuit does not want to sua sponte delve into a claim limitation that could open the door to more intricate issues under §112, ¶6, especially when no one briefed any issues under §112, ¶6. The patent is directed to radio-frequency identification tags (RFIDs). The specification describes types of memory in which stored data cannot be altered, such as fusible-link diode-array read-only memory, anti-fuse memory, and laser-programmable read-only memory (laser PROM). But there is also a microprocessor, a computer, and a controller that may be involved to perform the “storing.” The specification does not appear to identify exactly what structures are associated with the claimed “means for permanently storing data in an unalterable fashion.” This may trigger an issue as to a missing link between disclosed structure and the claimed means-plus-function element. See, e.g., B. Braun Medical, Inc. v. Abbott Labs, 124 F.3d 1419, 1425 (Fed. Cir. 1997).
Moreover, if a computer is corresponding structure, then there may be a further issue as to whether a requisite algorithm is disclosed for the claimed “permanently storing data in an unalterable fashion.” For computer-implemented means-plus-function elements interpreted under 35 USC §112, ¶6, the specification must disclose an algorithm to perform the claimed function. Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Failure to disclose an algorithm renders the claim indefinite under 35 USC §112, ¶2. The ‘017 Patent includes a brief mention about a laser PROM being “permanently programmed at the time of manufacture by utilizing a laser beam to make or break connections in the device.” (‘017 Patent, column 6, lines 60-63). Is this an algorithm for the claimed “storing?” As the specification was drafted well before the Aristocrat decision, arguments could potentially be made either way. The use of a laser beam to make or break connections renders the stored data “permanent.” But, the “storing” of data itself (before making it permanent) would presumably be the “programming” at the time of manufacture – which is not further described in the patent.
Or, contrary to the Federal Circuit’s requirement for an algorithm in Aristocrat, perhaps the claimed “storing” function here falls under the exception to Aristocrat for functions that could be performed by a general purpose computer without further programming. In re Katz Interactive Call Processing Patent Litigation, 639, F.3d 1303, 1317 (Fed. Cir. 2011). Pursuant to Katz, it could be argued that the programming/storing of unique identifiers for the RFID tag could simply be the general purpose computer’s storing of data into the laser PROM – for which no special algorithm under Aristocrat is necessary. In other words, the “storing” part is simply the common storing by a general purpose computer (for which a special algorithm under Aristocrat is not necessary) and the “permanently” / “in an unalterable fashion” part is the use of the laser beam to make or break the connections in the device to render the stored data permanent (which should satisfy the Aristocrat “algorithm” requirement). Unfortunately, the Federal Circuit bypassed this opportunity to provide clarification on the metes and bounds of when an algorithm is required.
Instead, this case establishes a non-starter to the entire §112, ¶6 analysis, premised on whether the inventor/patentee first argues for application of §112, ¶6. But, if the inventor/patentee does not raise the issue first, the Board could raise it sua sponte, as the Board did in the numerous occasions noted by Judge Cleveger. What then, when such a case reaches the Federal Circuit? How would the Board’s sua sponte application of §112, ¶6 reconcile with the apparent rule in this case requiring the inventor/patentee to explicitly argue for its application first?
Nowadays, means-plus-function limitations may be regaining interest in order to address looming patentable subject matter issues under 35 USC §101 (as reflected in the pending en banc review of CLS Bank v Alice Corp) and to help distinguish over prior art. If a means-plus-function limitation is intended, this case serves as a warning to the patent practitioner to explicitly argue for application of 35 USC §112(f) (under AIA) in appeals to the Board or in district court litigation.