One Overlooked Consequence if Congress Discards Alice: More Williamson Section 112(f) Challenges

By Joseph Edell
June 29, 2019

“In the three years before Williamson, district court litigants had a 24% success rate in making arguments that claim terms lacking ‘means for’ language are subject to Section 112(f) (25 out of 104 cases). In the three years after Williamson, district courts issued 171 opinions addressing terms lacking ‘means for’ language and Section 112(f) …representing a 64% increase [in the frequency of such arguments].”

Coverage of the Senate Judiciary Subcommittee on Intellectual Property hearings on proposed amendments to the Patent Act has trumpeted the possibility that Congress will undo the Alice test for Section 101 eligibility. Many stakeholders have commented on the benefits this could bring to patentees. But if this comes to pass, accused infringers won’t cease bringing early validity challenges—they’ll instead shift their focus from Section 101 to other grounds. Testimony before the Senate and the data on recent district court decisions strongly suggest that Section 112(f) will emerge as the preeminent ground for early validity challenges.

Codifying Williamson

In addition to amending Section 101, the proposed amendments would codify the functional-claiming standard which the en banc Federal Circuit announced in Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir. 2015). As former USPTO Director David Kappos testified before the Subcommittee, the proposed legislation stands to decrease invalidity challenges under Section 101, while increasing invalidity challenges under Section 112:

The draft [amendment] will productively redeploy judicial and USPTO resources to the real issues affecting patentability, returning Section 101 to its proper role as a coarse filter for screening claims manifestly lacking any practical utility through human intervention, and leaving the fine grained assessment of patentability to sections 102, 103, and 112…. One constructive approach is further strengthening Section 112.

And David Jones, Executive Director of the High Tech Inventors Alliance, testified that the Section 101 “propos[al] fundamentally changes … the statutory provision defining the types of inventions that may be patented.” He further testified that the Section 112(f) proposal “will eliminate lingering arguments about the effect of inclusion or omission of the words ‘means for’ and whether particular terms should be interpreted as functional in the wake of Williamson.”

Under Williamson, patent claims lacking specific “means for” language no longer enjoy a “strong” presumption against the applicability of Section 112(f). Courts must instead focus on whether claim limitations recite a function complemented by a “nonce” word (e.g., a “module,” “mechanism,” “device,” or another generic “black box” comparable to “means for” or “step for”) without sufficient structure to perform the function. If so, Section 112(f) narrowly restricts the claimed function to its corresponding patent-disclosed structure (and equivalents), or renders it invalid as indefinite if the function isn’t clearly linked to such a structure.

A Look at the Data

The objective data on Williamson’s impact so far shows that its influence will likely grow in a landscape of fewer Section 101 challenges under Alice. Williamson’s lower functional-claiming standard has caused a spike in the frequency and success rate of arguments that claim terms lacking “means for” language are subject to Section 112(f). In the three years before Williamson, district-court litigants had a 24% success rate in making such arguments (25 out of 104 cases). Courts decided the vast majority of these arguments at claim construction, and a handful on summary judgment. And all 104 decisions cited the strong presumption that Section 112(f) doesn’t apply.


By contrast, district courts issued 171 opinions addressing terms lacking “means for” language and Section 112(f) in the three years after Williamson, again mostly in connection with claim construction. This represents a 64% increase in how often parties argued that terms lacking “means for” language were subject to Section 112(f)—an especially dramatic change considering that there was a 26% decline in new patent infringement cases during the same period. Parties were also 75% more successful in making these Section 112(f) arguments, as shown below.

These trends are likely to continue or accelerate if Congress undoes the Alice test for Section 101 challenges and codifies Williamson’s lower functional-claiming standard for Section 112(f). At the conclusion of the hearings, Senator Thom Tillis emphasized the “need to further enhance our proposals for Sections 112 so that vague business methods and generic computer claims can’t pass muster and be weaponized against small businesses, start-ups, and entrepreneurs.” So if Alice withers, the Williamson challenges are likely to blossom.

The Author

Joseph Edell

Joseph Edell is a patent litigation attorney at Fisch Sigler LLP and former patent examiner who has 18 years of experience in the field of intellectual property. The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or any of their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

For more information or to contact Joe, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Jeff Hardin June 29, 2019 3:33 pm

    Tillis mentioned the need to enhance their proposals for Sections 112 “so that vague business methods and generic computer claims can’t pass muster and be weaponized against small businesses, start-ups, and entrepreneurs.”

    Does not “specific and practical utility” in their proposed 100(k) already prohibit that? The clause “specific and practical utility” as found in the proposed 100(k) would indeed prevent business methods that are vague and computer claims that are generic, as neither would satisfy the specific utility requirement. Accordingly, there is no need to involve 112(f) to accomplish that goal.

    The proposed 100(k) reads:
    “The term ‘useful’ means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”

    Now, Congress and many stakeholders acknowledged that 100(k) has problems with “field of technology” and the location of “through human intervention”.

    Again, I propose this for 100(k), and this language would still satisfy Tillis’ concern on vague business methods and generic computer claims:

    “The term ‘useful’ means any invention or applied discovery [through human intervention] that provides specific and practical utility [as disclosed and/or possessed by the inventor(s)].”

  2. Joachim Martillo June 29, 2019 4:19 pm

    The article explains why I have mixed feelings about modifying 35 U.S. Code §?112 (f). It’s almost certainly going to happen. We have to make sure that definition of equivalents makes the claim stronger and less open to challenge.

    Here is my tweaking.

    (f) Functional Claim Elements. —
    An element in a claim expressed as a specified function without the recital of structure, material, or action in support thereof shall be construed to cover both the corresponding structure, material, or action whichever is described in the specification and also equivalents thereof
    (1) insofar as equivalent structure, material, or action substitutes for said element without changing the function of said element or
    (2) unless the specified function is a praxis or a standard either in the art of the invention or in a related art.

    You can find all my suggested modifications to Title 35 in Title 35 Changes.

  3. Paul F. Morgan June 30, 2019 8:47 am

    The presently proposed 101 amendments are primarily about the “new” or “laws of nature” unpatentable rejections, rather than the “abstract” 101 rejections. Even if 112(f) is broadened as proposed, it is not at all equivalent in practice to low cost up front 12(b)(6) Alice 101 motions, because summary judgment is rarely granted on that basis. Nor can 112 be raised in any IPR except for amended claims.

  4. Anon June 30, 2019 10:27 am

    The article here comes across as a louder voice with a little stick (in contrast to Teddy’s maxim), and appears to want to be an “objective” warning not to “mess with” the easy tool of current 101 because 112 (proposed) will be just as much a weapon.

    Several significant flaws in the article leave me rather unconvinced that the writer’s views will come to pass.

  5. Joachim Martillo June 30, 2019 11:12 am

    If the new § 112 (f) is enacted into law and if the Markman hearing finds a claim to lack structure, material, or action under the new § 112 (f) construction because of lack of support in the specification, can’t the defendant then make R. 12(b)(6) motion for dismissal for failure to state a claim upon which relief can be granted?

  6. Night Writer June 30, 2019 12:17 pm

    The entire efforts behind 112(f) are just like the anti-patent judicial activists’ 101 attacks on patents.

    Textbooks and all working engineers use functional language to capture the set of known solutions. This is a fact.

    This is more Lemley nonsense as the man burns down the patent system laughing his head off as he and his wife pull in the millions.

  7. Irl Sanders III June 30, 2019 2:40 pm

    New 101 Suggestion that covers Associations with Nature

    Whoever Discovers and or Invents a useful composition of matter, device, machine, method of manufacture or therapeutic treatment, and improvements to them, including utilizing the products, laws and phenomena of nature directly or indirectly, no matter how simple that may benefit the general welfare may receive a patent recognizing for a period of time the sovereignty of the person’s inventive conceptions, intuitions, insightful discoveries and trade secrets.

    Additions that may be Included in 101 or Elsewhere

    An issued patent is considered valid and inviolate except in a case of fraud, or one or more clear and substantial errors or mistakes and logical omissions that cannot be corrected by a patent reissue process.

    The process, method, or means of implementing and or putting to use the discovery and or invention is an integral component or claim of the invention regardless of how simple or commonly used they are.

    It is the Direction of the Congress and Executive that all Executive and Court entities proactively support and encourage patents for discoveries and inventions, and improvements thereto in order to ensure bringing benefits of innovative thinking and work to the populous of the word.

    [NOTE: Protective means for non-physical innovative Business Methods, Software, mathematical equations, and other various beneficial developments could or should be provided for by other means such as copyrights and even entirely new types of warrants or licenses.]

  8. Joachim Martillo June 30, 2019 3:37 pm

    I am just as likely to work for a defendant as for a plaintiff in an infringement lawsuit. A functional limitation in a claim with no underlying structure is a giant bullseye for the defendant’s attorneys. Unless the functional limitation pertains to a praxis or to a standard, the plaintiff almost certainly claims embodiments that he does not possess or that lack support in the specification.

    The proposed § 112 (f) with my tweaks makes a well written claim much stronger because I wrote the Doctrine of Equivalents into the statute in a prophetic form. A patent pirate should not be able to escape a complaint for infringement because someone later developed an obvious substitute for one of the claim’s limitations.

    With respect to the claim in question in Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir. 2015), a limitation of a “learning control module” with no underlying structure was ridiculous in 1998. It still is. Learning control is an area of active research.

  9. Night Writer June 30, 2019 8:01 pm

    >> the plaintiff almost certainly claims embodiments that he does not possess or that lack support in the specification.

    Is it an enabled embodiment? You seem to be saying that the inventor is not in possession of an embodiment that is enabled by the specification.

    Again—I have quoted from engineering books used at MIT that functional descriptions are used to describe known solutions to problems. If you want to equate ‘praxis” with all known solutions to a person skilled in the art, then we are in agreement.

    Again–the only way to think about this that is valid is scope of enablement. If you enable an embodiment with the spec + anyone skilled in the art, then the scope of the claim either covers that embodiment or it is trivial to design around the claims.

    This is axiomatic.

  10. B June 30, 2019 8:30 pm

    “Tillis mentioned the need to enhance their proposals for Sections 112 ‘so that vague business methods and generic computer claims can’t pass muster and be weaponized against small businesses, start-ups, and entrepreneurs.'”

    I do a lot of business methods, and I agree with Tillis. There’s a lot of bad patents out there. I also had a habit of supporting my functional language in the specification way before Citrix.

    Forget presumptions. There’s only been one way to make sure a claim doesn’t evoke 112(f) in the last 20 years. Add structure or a step to a claim limitation.

  11. Jason Lee July 1, 2019 10:16 am

    Formal semantics and objective perspective will not be enough to fight off the power of Silicon Valley. The one with the biggest stick will dictate the new laws and no one has a bigger stick then Apple, Google Amazon. IP be will remain dormant in America as Europe and China open their doors for inventors to thrive.

  12. PTO-Indentured July 1, 2019 1:46 pm

    The Bigger Stick (@ 11) is called an unprecedented (intentionally addictive) flow of cash to politicians on both sides of the aisles — intent: to perpetually harm U.S. patents and the US patent system — to an extent quite unlike any the US patent system has ever encountered. With easy-money enough to drench then, flat out drown the system for patent-life expiry lengths of time (decades to come).

    To an extent that Congress cannot see this (turning a blind eye) is the extent to which the US patent system will be irreversibly harmed for so many years ahead.

    Irony Alert: Innovation (the next ‘Big Thing’) by, and taxes paid to the US weal by, those so favored and doted on so far? e.g., since AIA 2012: abysmal.

    An insidious side of such exorbitant money-influencing is that ‘sins of commission’ needn’t be an apparent eyebrow raiser, when ‘sins of omission’ — doing nothing to help, often leaving little or no paper trail — will suffice. This is a win-win tactic to ‘Them that’s got…’ (e.g., a few pre-AIA IP big winners, and all politicians getting the big money) and a major loss to ‘Them that’s not…’ a loss to those who don’t grease palms, to U.S. innovation, revenue, jobs, the economy and a patent system known to be a pay grade or two below decision-makers preempting attempted course-corrections, best-efforts by the those at the USPTO trying to do the right thing for all inventors.

    What we’re witnessing (subjects of) is a transfer of wealth to multi-national corporations who see no financial incentive in showing allegiance to any country in particular, whose revenue — tax unfettered — owes no loyalty to any national benefactor. Pure cash, pure ROI, of unprecedented amounts, helping fewer and fewer and…ad nauseam.

    Will the U.S. allow a ‘better than abysmally innovative by Big Co.s’ patent system; a return to diverse patents that are once again defensible by any reasonable and apparent measure, and thereby flourishing? Can it even do so, so long as truth remains cash-suppressed, smothered, easily out-played?

    One way or another, we shall see. Hopefully, truth to (over) power can prevail.

  13. Josh Malone July 1, 2019 5:18 pm

    Can someone explain why 112(f) is necessary at all? If:

    1. functional terms are given their plain and ordinary meaning;
    2. that results in an “overly broad” claim;
    3. the inventor had possession of the claimed subject matter under 112(a); and
    4. the claim is not obvious in light of the prior art under 103

    Then why should the public be entitled to use such an invention? How can an “overly broad” claim pass 112(a) and 103?

    If it fails either 112(a) or 103 then then the patent is invalid.

    Why do we need 112(f)?

    This article seems to make the case that Congress must overrule Williamson AND Alice.

  14. Pro Say July 1, 2019 7:49 pm

    Josh @ 13: “Can someone explain why 112(f) is necessary at all?”

    That’s easy. It’s necessary because … because … because … wait for it … because Big Tech says it is.

  15. Anon July 2, 2019 7:56 am

    Properly understood, the option afforded by 35 USC 112(f) is just that: an option.

    The option is meant for PURE functional claiming, and what we have seen is a bastardization against ANY word appearing to be functional on its own.

    The use of terms sounding in function are fully allowed under the Act of 1952 — quite apart and distinct from the option (under 35 USC 112(f)) — throughout a claim.

    We have gotten to the point that the drum-beat propaganda sees a descriptor that appears functional and immediately some type of “higher requirement” is wanted in order to revert to pre-1952 law.

    It is NOT a coincidence that the same people often (granted, not always) wanting a harsh 112(f) treatment are the same people wanting a harsh 101 treatment.

  16. Night Writer July 2, 2019 8:19 am

    >>Can someone explain why 112(f) is necessary at all?
    >>If:
    >>1. functional terms are given their plain and ordinary meaning;

    There is the problem. Functional terms are not given their plain and ordinary meaning to one skilled in the art. If a judge feels that a term is functional and does not connote structure, then it is deemed a functional term and then relegated to structures disclosed in the specification and their equivalents.

    The problem is that anyone that is actually an engineer interprets a functional term as structure but the judge does not. And there are many cases where the judge says it is functional when a person skilled in the art would never say that.

    We are actually taught to write claims to have terms on the edge of function vs. structure.

  17. Jam July 2, 2019 10:45 am

    What would really be nice is if the law was amended to state something like:

    “if the scope of a claim of a granted patent includes enforceable subject matter and nonenforceable subject matter, then a court shall enforce the scope of the claim limited to enforceable subject matter of the claim”

    Basically re-codify the presumption of validity, which has been lost for all practical purposes. It’s not perfect, but it is getting tiresome to have to tell grown adults that a computer is not an abstract idea.

  18. Joachim Martillo July 2, 2019 11:22 am

    Back when I worked at Bell Labs in the 1980s, there was a tendency to view 35 USC § 112 sixth paragraph in a defensive role. If an engineering group created an electronic invention, claiming it sufficiently early in an issued patent with a means + function limitation usually meant no one could bring a complaint against AT&T for infringement in the future.

    Also, AT&T could not simply decide that it was only going to buy Western Electric equipment. AT&T often specified requirements for equipment in such a way that a third party could only meet them by licensing a patent from AT&T.

    Means + function limitations in patent claims were more than adequate to discourage 3rd party suppliers.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website