Posts Tagged: "functional limitations"

Intellectual Ventures v. T-Mobile: Summary Judgment of Non-Infringement Vacated Due to Incorrect Claim Construction

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.

A Primer on Indefiniteness and Means Plus Function

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within the body of the claim itself… If there is no structure in the specification the person of skill in the art cannot save the disclosure by understanding what the drafter intended to be covered by the means plus function limitation in the claims. Thus, means-plus-function claims are valid at the mercy of the specification, and only to the extent that the specification contains support for the structures that define the means… The Federal Circuit does not blindly elevate form over substance when evaluating whether a particular claim limitation invokes means treatment. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“We do not mean to suggest that section 112(6) is triggered only if the claim uses the word ‘means.’”).

Federal Circuit Clarifies Standard for Indefiniteness of Mixed Subject Matter Claims

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.

Use of ‘Means’ with term that Designates Structure Does Not Invoke § 112 ¶ 6

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.

Patent Drafting for Beginners: The anatomy of a patent claim

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.