Mechanical and Electrical Arts Surviving 112(f) and Disclosing - - PowerPoint PPT Presentation

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Functional Claiming for Mechanical and Electrical Arts

Surviving 112(f) and Disclosing Functional Basis to Meet Heightened Standard of Review

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific THURSDAY, SEPTEMBER 7, 2017

Doris Johnson Hines, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. Theresa Stadheim, Esq., Schwegman Lundberg & Woessner, P.A., Minneapolis, Minnesota

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These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the joint authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. And not all views expressed herein are subscribed to by each joint author. Thus, the joint authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm) and JONES DAY cannot be bound either philosophically or as representatives

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4

5

Outline

• I. Williamson sets the standard
• II. Review of the recent decisions and how the courts

have applied Williamson in the electrical and mechanical arts III.PTO Guidance IV.Best practices for leveraging §112(f) and functional claims for maximum patent protection

6

What is functional claiming?

35 U.S.C. §112(f) (formerly 112(6): ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

7

Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc)

Claim 8. A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising: … a distributed learning control module for receiving communications a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module

8

Williamson (cont’d)

District Court: Invalid for Indefiniteness.

• “Distributed learning control module,” was a means-plus-function

term.

• Specification failed to disclose the necessary algorithms for

performing all of the claimed functions.

• Federal Circuit: Affirmed.
• “To determine whether § 112, para. 6 applies to a claim limitation,
• ur precedent has long recognized the importance of the presence or

absence of the word “means.” …the use of the word “means” in a claim element creates a rebuttable presumption that § 112, para. 6 applies.

9

Williamson (cont’d)

Federal Circuit Quotes:

• Claim “replaces the term ‘means’ with the term ‘module’ and

recites three functions performed by the ‘distributed learning control module.’”

• ’Module’ is a well-known nonce word that can operate as a

substitute for ‘means’ in the context of § 112, para. 6. …Here, the word ‘module’ does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.

• Prefix ‘distributed learning control’ does not impart structure into

the term ‘module,’ nor does written description impart any structural significance to the term.

10

Williamson (cont’d)

• “Where there are multiple claimed functions, the

patentee must disclose adequate corresponding structure to perform all of the claimed functions.”

• “Structure disclosed in the specification qualifies as

“corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.”

• “Even if the specification discloses corresponding

structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function.”

11

Williamson (cont’d)

• If a person of ordinary skill in the art would be unable to

recognize the structure in the specification and associate it with the corresponding function in the claim, a means- plus-function clause is indefinite.”

• “The specification does not set forth an algorithm for

performing the claimed functions.”

• Newman dissent – adds uncertainty

12

Nonce Words

Mystery List A:

• – mechanism for
• – module for
• – device for
• – unit for
• – component for
• – element for
• – member for
• – apparatus for
• – machine for
• – system for

Mystery List B:

• Circuit for
• Detent mechanism
• Digital detector for
• Reciprocating member
• Connector assembly
• Perforation
• Sealingly connected joints
• Eyeglass hanger member

13

Nonce Words (cont’d)

Nonce words (invoke paragraph 6) as listed in MPEP 2181:

• mechanism for
• module for
• device for
• unit for
• component for
• element for
• member for
• apparatus for
• machine for
• system for

The following terms have been held not to invoke paragraph 6 (as listed in MPEP 2181) :

• Circuit for
• Detent mechanism
• Digital detector for
• Reciprocating member
• Connector assembly
• Perforation
• Sealingly connected joints
• Eyeglass hanger member

14

District Court Cases after Williamson

15

How is Williamson being applied by District Courts

After Williamson, courts determine if a claim limitation is in a format consistent with traditional means-plus-function (MPF) claim limitations.

>

Does the claim limitation provide or impart any structure to the claimed function being performed. Once the court establishes that a claim term is drafted in MPF format, construction of the term is the traditional two-step process. Not Dead Yet Mfg.

• V. Pride Solutions, LLC, 2015 U.S. Dist. LEXIS 135629 (N.D. ILL. Oct. 5,

2015).

>

First, the court identifies the claimed function.

>

Second, the court determines what structure, if any, disclosed in the specification corresponds to the claimed function.

16

“Mechanism” Invokes 112(f)

MIT v. Abacus, 462 F.3d 1344 (Fed. Cir. 2006)

A system for reproducing a color original in a medium using a selected multiplicity of reproduction colorants, the system comprising in serial order: a scanner for producing from said color original a set of three tristimulus appearance signals dependent on the colors in said original; display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals; and colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values

• f said reproducing colorants to produce in said medium a colorimetrically-

matched reproduction.

17

“Mechanism” Invokes 112(f)

MIT v. Abacus, 462 F.3d 1344 (Fed. Cir. 2006) The generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote sufficiently definite structure. Distinguish Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), which addressed “detent mechanism” and held that “the noun ‘detent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.”

18

“Mechanism” Invokes 112(f)

MIT v. Abacus, 462 F.3d 1344 (Fed. Cir. 2006)

The term “colorant selection,” which modifies “mechanism” is not defined in the specification, has no dictionary definition, and there is no suggestion that it has a generally understood meaning in the art. Thus “colorant selection mechanism” does not connote sufficient structure to avoid section 112, paragraph 6 treatment.

19

“Mechanism” Invokes 112(f)

Welker Bearing v. PHD, 550 F.3d 1090 (Fed. Cir. 2008)

A locating and clamping assembly comprising: a body defining an internal cavity and an opening from said cavity to the exterior of said body; a locating pin disposed in said cavity and extending along an axis A out of said opening to a distal end; an actuator for moving said locating pin rectilinearly along said axis A into and out of said

• pening;

at least one finger supported by said locating pin adjacent said distal end; said assembly characterized by a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin.

20

“Mechanism” Invokes 112(f)

Welker Bearing v. PHD, 550 F.3d 1090 (Fed. Cir. 2008)

This court must assess the meaning of ‘mechanism for moving said finger’ in light

• f this case law. In that context, the ‘mechanism for moving said finger’ language

includes even less structural context than the ‘colorant selection mechanism’ in

• MIT. No adjective endows the claimed ‘mechanism’ with a physical or structural
• component. Further, the claim provides no structural context for determining the

characteristics of the ‘mechanism’ other than to describe its function. Thus, the unadorned term ‘mechanism’ is a substitute for the term 'means for.'

21

“Mechanism” Invokes 112(f)

Welker Bearing v. PHD, 550 F.3d 1090 (Fed. Cir. 2008)

The applicant could have supplied structural context to the claim in any number of

• ways. If the claim had recited, e.g., a “finger displacement mechanism,” a “lateral

projection/retraction mechanism,” or even a “clamping finger actuator,” this court could have inquired beyond the vague term “mechanism” to discern the understanding of one of skill in the art. If that artisan would have understood such language to include a structural component, this court's analysis may well have turned out differently.

22

“Mechanism” Does Not Invoke 112(f)

Bonutti Research, Inc. v. Lantz Med., Inc.

Claim 1: A finger orthosis for positioning a joint in a finger on a hand of a patient, the finger orthosis comprising: a hand cuff positionable on the hand of the patient; and a bending mechanism removably attachable to the finger and selectively attachable to the hand cuff, and including first and second bending portions and a force transmitting mechanism connected to and interposed between the first and second bending portions.

• No. 1:14-cv-00609-SEB-MJD, 2016 WL 247752 (S.D. Ind. Jan. 21, 2016)

23

Because no function is identified in the claim and to the extent we conclude the function is ‘bending,’ the claim language recites sufficiently definite structure to render § 112, ¶ 6 inapplicable. The claim describes both the structural components of the bending mechanism as well as the manner in which the parts are connected.

Bonutti Research, Inc. v. Lantz Med., Inc., No. 1:14-cv-00609-SEB-MJD, 2016 WL 247752, at *16 (S.D. Ind. Jan. 21, 2016)

“Mechanism” Does Not Invoke 112(f)

24

The claim provides that the bending mechanism includes: ‘first and second bending portions’ and ‘a force transmitting mechanism’ that is ‘connected to and interposed between the first and second bending portions.’ The claim language itself defines the term with sufficient structure . . . .

Bonutti Research, Inc. v. Lantz Med., Inc., No. 1:14-cv-00609-SEB-MJD, 2016 WL 247752, at *16 (S.D. Ind. Jan. 21, 2016)

“Mechanism” Does Not Invoke 112(f)

25

MPEP Section 2181: The following is a list of non-structural generic placeholders that may invoke 35 USC 112(f) or pre-AIA 35 USC 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”

“Unit” and “Element” Typically Invoke 112(f)

26

OPTIS Wireless Tech. LLC v. ZTE Corp. A mobile station apparatus comprising: . . . a determination unit configured to determine a resource of downlink, to which a response signal transmitted from the base station is mapped, from an index of the allocated resource block based on the allocation information, . . .

• No. 2:15-CV-300-JRG-RSP, 2016 WL 1599478, at *25 (E.D. Tex. Apr. 20,

2016)

“Unit” Does Not Invoke 112(f)

27

‘Determination unit’ . . . . connotes structure. Even if the term ‘determination unit’ does not in isolation connote sufficiently definite structure, the claim connotes structure to one of skill in the art by reciting details of how the unit functions as part of the claim. The claim states the objective of the ‘determination unit’ is ‘to determine a resource of downlink.’ It further states the ‘determination unit’ achieves this objective using ‘an index of the allocated resource block based on the allocation information’ received by the ‘reception unit.’ Such a disclosure of the objectives of the ‘determination unit’ and how the unit operates within the context of the claimed invention connotes sufficiently definite structure to one of skill in the art. OPTIS Wireless Tech. LLC v. ZTE Corp., No. 2:15-CV-300-JRG-RSP, 2016 WL 1599478, at *25 (E.D. Tex. Apr. 20, 2016)

“Unit” Does Not Invoke 112(f)

28

Telebrands Corp. v. GMC Ware, Inc. Claim term: driving element Does not invoke MPF because the claim required that the driving unit be fixed securely within the axial space of the rotary rod and formed with a central spiral hole. Other physical limitations in the claim meant that the driving element was “an object configured to rotate and simultaneously cause rotation of another object.

• No. 15-03121-SJO, 2016 U.S. Dist LEXIS (C.D. Cal. Aug. 17, 2016)

“Element” Does Not Invoke 112(f)

29

Verint Sys. v. Red Box Recorders, Ltd., 166 F.3d 364

(S.D.N.Y. 2016).

A recording system for capturing and recording audio data packets transmitted across a data network, comprising: a data switch operable to receive a plurality of call setup requests, requesting to establish a voice data session between a calling party and a called party, the voice data session comprising audio data packets communicated between a calling party and a called party via a data network; a monitoring device operable to capture the audio data packets received by the data switch, wherein the monitor is operable to identify a call to which the audio data packets belong, and to associate the audio data packets to a voice interaction session; and a data store operable to interface with the monitor and to record at least a portion

• f the received audio data packets to a record associated with the voice interaction

session.

“Device” Invokes 112(f)

30

Verint Sys. v. Red Box Recorders, Ltd.

The term “monitoring device” invoked MPF treatment and failed to provide sufficient structure. The term “device” is a nonce term that was operative to perform three functions:

 To capture the audio data packets…  To identify a call…  To associate the audio data packets to a voice interaction session

“Device” Invokes 112(f)

31

“Device” Invokes 112(f)

The claims recite computer-implemented functions, but the specification did not provide an algorithm for all the functions of the monitoring device. Reliance on the Summary of the Invention, which stated the claimed functions in a “conclusory manner”, was insufficient disclosure of an algorithm for the “identify” function. Reliance on identical portions of the specification as supporting the “identify” and “associate” functions evidenced that the patent lacked a description of how the device would perform the claimed monitoring. The term ‘monitoring device’ did not appear anywhere in the specification much less with an associated algorithm. “The failure to even reference this device in the specification raises enough doubt about whether a person of

• rdinary skill in the art could understand what structure corresponds to the

means limitation.”

32

Cellular Commc'ns Equip. LLC, v. Samsung Elecs. Co. No. 6:14-

CV-759, 2016 WL 1237429, at *11 (E.D. Tex. Mar. 29, 2016)

A method, comprising: monitoring a usage of a plurality of buffers; detecting one of a plurality of pre-selected conditions corresponding to the plurality of buffers; designating one of a plurality of buffer status reporting formats comprising a long buffer status reporting format and a short buffer status reporting format depending on the pre-selected condition detected; and communicating a buffer status report to a network device in accordance with the buffer status reporting format designated, wherein the designating designates the long buffer status reporting format when there is sufficient uplink bandwidth to communicate using the long buffer status reporting format.

“Device” Does Not Invoke 112(f)

33

The disputed term includes a preceding modifier, ‘network,’ which changes the meaning of the word ‘device.’ . . . The specification shows how ‘network device’ designates structure: . . . FIG. 5 is a block diagram representing a short buffer status reporting format 500 in accordance with one embodiment of the present invention.

Cellular Commc'ns Equip. LLC, v. Samsung Elecs. Co., No. 6:14-CV-759, 2016 WL 1237429, at *11 (E.D. Tex. Mar. 29, 2016)

“Device” Does Not Invoke 112(f)

34

The word “network” gives rise to structural connotations when coupled with the word “device,” as reinforced by the specification. The term “network device” does not appear “in a format consistent with traditional means-plus-function claim limitations.” In Williamson, the court noted that the relevant portion of the claims at issue “replaces the term 'means' with the term 'module' and recites three functions performed by the 'distributed learning control module.”

Cellular Commc'ns Equip. LLC, v. Samsung Elecs. Co., No. 6:14-CV-759, 2016 WL 1237429, at *11 (E.D. Tex. Mar. 29, 2016)

“Device” Does Not Invoke 112(f)

35

The claim does not recite any functional limitation associated with the “network device” other than perhaps merely being the recipient of a buffer status report. The disclosure in the specification and the context in which the term is used in the claims demonstrate that “network device” is not a means-plus-function term.

Cellular Commc'ns Equip. LLC, v. Samsung Elecs. Co., No. 6:14-CV-759, 2016 WL 1237429, at *11 (E.D. Tex. Mar. 29, 2016)

“Device” Does Not Invoke 112(f)

36

Verint Sys. v. Red Box Recorders, Ltd., (S.D.N.Y)

A system to manage communications over a communications network that includes an exchange, the system comprising: a monitoring device configured to connect the system to the communications network and to receive data packets from the communications network; an analysis module configured to receive an identifier tagged onto the data packets so as to identify the data packets, such that the identified data packets form at least a portion of the traffic stream and that data packets are selected data packets; . . .

“Module” Invokes 112(f)

37

Verint Sys. v. Red Box Recorders, Ltd., (S.D.N.Y) The term “analysis module” involves the term “module” which was the exact nonce word at issue in Williamson, and that by adding the term “analysis” imparts no structure just as adding “distributed learning control” failed to do so in Williamson. The analysis module “is a black box nonce term that performs a function consistent with the format of MPF claiming” because it is configured to perform a single function (e.g., receive an identifier tagged onto the data packets…)

“Module” Invokes 112(f)

38

Verint Sys. v. Red Box Recorders, Ltd., (S.D.N.Y)

Patentee’s reliance on a technical dictionary “reveals a lack of structure in the specification.”

 Patentee attempted to impart structure into the claim by arguing that the

“‘analysis module’ contains inherent structure because the term ‘data analysis’ is defined in a technical dictionary as the ‘systematic investigation

• f data and their flow in a real or planned system.’”

 Court: the “immediate resort to a technical dictionary for an entirely different

term reveals the lack of structure in the specification… crediting the definition of ‘data analysis’ as the definition for the added term ‘analysis’ still only describes the claimed function at a high level but fails to offer corresponding structure…”

“Module” Invokes 112(f)

39

Verint Sys. v. Red Box Recorders, Ltd., (S.D.N.Y) The court reviewed the specification and did not find an algorithm performing the analysis module’s functions or steps.

“Module” Invokes 112(f)

40

Metaswitch Networks Ltd. v. Genband USA LLC

A system for interfacing telephony voice signals with a broadband access network, comprising: a plurality of telephony port modules each operable to receive telephony voice signals, each of the plurality of telephony port modules including one or more digital signal processors, each digital signal processor operable to perform one or more processing functions on the telephony voice signals, wherein each of the plurality of telephony port modules may transfer a received telephony voice signal to any digital signal processor on any of the plurality of telephony port modules.

• No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *38 (E.D. Tex. Aug. 10,

2015)

“Module” Does Not Invoke 112(f)

41

The claims recite the telephony port modules “including one or more digital signal processors” or “including a plurality of digital signal processors.” The reference to a ‘port’ connotes structure known in the art, relying on Dictionary of Computer Science Engineering & Technology, Newton's Telecom Dictionary; Phillips, 415 F.3d at 1318 (“We have especially noted the help that technical dictionaries may provide to a court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms.”)

Metaswitch Networks Ltd. v. Genband USA LLC, No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *39 (E.D. Tex. Aug. 10, 2015)

“Module” Does Not Invoke 112(f)

42

Same case: different claim

A gateway system for interfacing telephony signals with a broadband access network, comprising: an access network module operable to interface with the broadband access network; at least one telephony port module operable to interface with a public switched telephone network, the telephony port module including a plurality

• f digital signal processors operable to perform processing functions on

telephony signals received from either the broadband access network or the public switched telephone network; a system controller module operable to manage a flow of telephony signals between the access network module and the telephony port module, the telephony port module operable to assign telephony signals to any digital signal processor of the telephony port module.

“Module” Invokes 112(f)

43

Unlike the term “telephony port module,” the term “access network module” is not recited in the claim in association with any distinct structure, and the term does not modify the word “module” with any language that imparts structure. In particular, the phrase “access network” merely refers to a broadband network. The term “access network” module is therefore construed as a means-plus-function term

Metaswitch Networks Ltd. v. Genband USA LLC, No. 2:14-CV-744-JRG-RSP, 2015 WL 11197822, at *40 (E.D. Tex. Aug. 10, 2015)

“Module” Invokes 112(f)

44

Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D. Va Feb. 2016) Claim term: switching system for selectably and independently coupling and decoupling the processing logic with the first storage and/or the second storage under automated control A plain reading of the claim demonstrates that the patentee substituted the word ‘system’ for the word ‘means’ and then describes the function of the claimed system.

“System” Invokes 112(f)

45

Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D.Va Feb. 2016) Relying on Williamson, the court found 112(f) applied because ‘a generic description for software or hardware that performs a specified function’ does not impart sufficient structure. All was not lost: the court concluded that Figs 2 and 3 show the corresponding structure, “encompassing hardware, software, or a combination of the two.”

“System” Invokes 112(f)

46

Vir2us, Inc. v. Invincea, Inc., 2016 U.S. Dist. LEXIS 22098 (E.D.Va Feb. 2016)

“System” Invokes 112(f)

47

“Processor” Invokes 112(f)

GoDaddy.com, LLC v. RPost Commc'ns Ltd., Claim term: a processor for associating the content data with dispatch record data which includes at least said time related indicia and an indicia relating to the destination of the dispatch, to generate authentication data which authenticate[s] the dispatch and the contents of the dispatch

GoDaddy.com, LLC v. RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016)

48

“Processor” Invokes 112(f)

“Although the Court concludes that the term ‘processor’ connotes at least some structure, this does not end the Williamson analysis.” “The Court first reviews how one skilled in the art would understand ‘processor’ as used in Claim 82.”

GoDaddy.com, LLC v. RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016)

49

“Processor” Invokes 112(f)

Based on a review of dictionary definitions, the Court concludes that a skilled artisan would not recognize “processor” as a name of a sufficiently definite structure for “associating” two distinct types of data in order to “generate” a third class of data. Rather, one skilled in the art would understand “processor” to mean a general purpose computer, a central processing unit (“CPU”), or a program that translates another program into a form acceptable by the computer being used.

GoDaddy.com, LLC v. RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016)

50

“Processor” Invokes 112(f)

The Court concludes that “associating” two sets of data in order to “generate” a third set of data is not a typical function found in a general purpose processor and requires additional programming of the processor to implement. Accordingly, the claimed “processor” alone is not sufficient structure to perform the claimed functions.

GoDaddy.com, LLC v. RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016)

51

“Processor” Does Not Invoke 112(f)

Syncpoint Imaging, LLC v. Nintendo of Am. Inc.

Claim term: a processor for: (1) processing the image to detect position of the optical cursor and at least one property

• f the optical cursor” and (2) “converting the position and at

least one property to corresponding commands to control the computer and move an internal cursor to a position corresponding to the optical cursor while the optical cursor remains within the output displayed on the screen.

Syncpoint Imaging, LLC v. Nintendo of Am. Inc., No. 2:15-CV-00247-JRG- RSP, 2016 WL 55118 (E.D. Tex. Jan. 5, 2016)

52

Aristocrat and related cases hold that, if a patentee has invoked computer-implemented means-plus-function claiming, the corresponding structure in the specification for the computer implemented function must be an algorithm unless a general purpose computer is sufficient for performing the function

The Aristocrat rule should not apply when determining whether § 112, ¶ 6 should be invoked.

Syncpoint Imaging, LLC v. Nintendo of Am. Inc., No. 2:15-CV-00247-JRG- RSP, 2016 WL 55118, at *19 (E.D. Tex. Jan. 5, 2016)

“Processor” Does Not Invoke 112(f)

53

“Here, the Court finds that § 112, ¶ 6 does not apply for three

• reasons. First, ‘processor’ connotes structure.”

Relying on dictionary definitions, the court found that the definitions are analogous to the dictionary definitions relied on by the Federal Circuit in Linear Technology. (379 F.3d at 1320 (defining ‘circuit’ as ‘the combination of a number of electrical devices and conductors that, when interconnected to form a conducting path, fulfill some desired function.’)

Syncpoint Imaging, LLC v. Nintendo of Am. Inc., No. 2:15-CV-00247-JRG- RSP, 2016 WL 55118, at *19 (E.D. Tex. Jan. 5, 2016)

“Processor” Does Not Invoke 112(f)

54

“Second, [the claim] itself recites the objectives and operations of the processor limitation” “Third, one of ordinary skill in the art would understand the structural arrangements of the processor from the recited

• bjectives and operations of the processor.”

Syncpoint Imaging, LLC v. Nintendo of Am. Inc., No. 2:15-CV-00247-JRG- RSP, 2016 WL 55118, at *20 (E.D. Tex. Jan. 5, 2016)

“Processor” Does Not Invoke 112(f)

55

Finjan, Inc. v. Proofpoint, Inc. (N.D. Cal.) A system for protecting a computer from dynamically generated malicious content, comprising: a content processor (i) for processing content received over a network, the content including a call to a first function, and the call including an input, and (ii) for invoking a second function with the input, only if a security computer indicates that such invocation is safe;

2015 U.S. Dist. LEXIS 162504 (N.D. Cal. Dec. 3, 2015)

“Processor” Does Not Invoke 112(f)

56

Finjan, Inc. v. Proofpoint, Inc. (N.D. Cal.) The term “content processor” has a sufficiently specific structure. The claim itself describes how the content processor interacts with other components, which provides the term’s structural character.

“Processor” Does Not Invoke 112(f)

57

Zeroclick LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 1803782 (N.D. Cal. Aug. 16, 2016) Claim term: user interface code being configured to detect one

• r more locations touched by a movement of the user's finger on

the screen without requiring the exertion of pressure and determine therefrom a selected operation.

“Code” Invokes 112(f)

58

Zeroclick LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 1803782 (N.D. Cal. Aug. 16, 2016) The phrase ‘user interface code’ provides the same ‘black box recitation of structure’ as the word ‘module’ in Williamson, and the claim language provides no additional clarification regarding the structure of the term, the ‘user interface code’ is a means- plus-function term.

“Code” Invokes 112(f)

59

“Code” Does Not Invoke 112(f)

Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-CV-1187-JRG- RSP , 2016 WL 3647977, at *18 (E.D. Tex. July 7, 2016)

60

“Code” Does Not Invoke 112(f)

The claims connote that the “add-on computer software code” is structural by describing how the “add-on computer software code” operates within the claimed invention to achieve its

• bjectives:

For instance, the claim recites that the add-on computer software code runs within the software design tool, inserts specific symbols into a drawing provided by the software design tool, transmits specific symbol data from… Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-CV-1187-JRG-RSP, 2016 WL 3647977, at *19 (E.D. Tex. July 7, 2016)

61

“Code” Does Not Invoke 112(f)

Collaborative Agreements, LLC v. Adobe Systems Incorporated,

• No. 15-cv-03853-EMC, 2015 WL 7753293 (N.D. Cal. December

2, 2015)

• Claim 25 directed to a “code segment”
• Court found “code segment” suggest structure according

to dictionary definition

• Structure is understood as memory segments (p. 14)
• Claim also recited description of how the “code segment”
• perates
• Structural interactions of code segments is described (p. 14)
• Equated to Linear Tech , which describes circuit interactions

62

Examiners underwent training on 112(f), 112(b):

• Module 1: Identifying § 112(f) limitations

 Recognizing § 112(f) limitations that do not use classic “means for” phrasing  Interpreting “generic placeholders” that serve as substitutes for means (e.g., unit,

mechanism)

• Module 2: Clarifying the record to place remarks in the file regarding when § 112(f) is,
• r is not, invoked

 Establishing presumptions based on use of “means”  Providing explanatory remarks when presumptions are rebutted

• *available on USPTO website
• http://www.uspto.gov/video/cbt/BRI/
• http://www.uspto.gov/video/cbt/sftwrevaluate/index.htm
• http://www.uspto.gov/video/cbt/identify-limit/index.htm
• http://www.uspto.gov/video/cbt/make-record/index.htm

Functional claiming at the PTO

63

Module 3: Interpretation and definiteness

• f 35 U.S.C.§ 112(f) limitations
• How to interpret § 112(f) limitations under the broadest

reasonable interpretation (BRI) standard

• Evaluating equivalents
• Determining whether a § 112(f) limitation is definite under

§ 112(b) Module 4: Computer-implemented (software) § 112(f) limitations

• Determining whether a sufficient algorithm is provided to

support a software function

Functional cla laiming at the PTO

64

MPEP 2181: § 112(f) Claims Must Satisfy § 112(b)

 112(f) states that a claim limitation expressed in means-

plus-function language “shall be construed to cover the corresponding structure…described in the specification and equivalents thereof.”

 “If one employs means plus function language in a claim,

• ne must set forth in the specification an adequate

disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.”

65

How Does the USPTO Construe § 112(f)?

MPEP

• §2111.01: Plain Meaning: When an element is claimed

using language falling under the scope of 35 U.S.C. 112, 6th paragraph . . . the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim.

• § 2114: It should be noted, however, that means plus

function limitations are met by structures which are equivalent to the corresponding structures recited in the specification.

66

MPEP 2181: How to Satisfy §112(b) The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means (or step)-plus function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.

67

Module 4: Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness

Programmed computer functions require a computer programmed with an “algorithm” to perform the function

• An algorithm is a step-by-step procedure for accomplishing a given

result

• Can be expressed in various ways “in any understandable terms

including as a mathematical formula, in prose or as a flow chart, or in any other manner that provides sufficient structure” (Finisar)

• Amount of disclosure of an algorithm is analyzed on a case-by-case

basis

68

Module 4: Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness

Two types of computer-implemented functions:

• Specialized functions: functions other than those commonly

known in the art, often described by courts as requiring “special programming” for a general purpose computer or computer component to perform the function

 Ex. means for matching incoming orders with inventory on a pro rata

basis

• Non-specialized functions: functions known by those of ordinary

skill in the art as being commonly performed by a general purpose computer or computer component

 Ex. means for storing data

69

Module 4: Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness

The corresponding structure in the specification that supports a § 112(f) limitation that recites a specialized function is:

• A general purpose computer or computer component

along with the algorithm that the computer uses to perform the claimed specialized function

• The disclosure requirement under § 112(f) is not satisfied

by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed function

70

Module 4: Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness

A specialized function must be supported in the specification by the computer or computer component and the algorithm that the computer uses to perform the claimed specialized function

• The default rule for § 112(f) programmed computer claim limitations is to

require disclosure of an algorithm when special programming is needed to perform the claimed function

• Disclosure of the step by step procedure for specialized functions establishes

clear, definite boundaries and notifies the public of the claim scope

• “Claiming a processor to perform a specialized function without disclosing

the internal structure of the processor in the form of an algorithm, results in claims that exhibit the ‘overbreadth inherent in open-ended functional claims’” (Halliburton Energy Services (emphasis added))

71

Real-life prosecution examples

 “Security system control panel” a nonce term?  “Transcoder” and “bus” nonce words?

 Argue by pointing out structure in the claims  Argue a backup position (“even assuming 112(f) applies, here

is written description in the spec…”

 Remove the word module

 “processor” is often a good substitute if you have support

72

Practical Tips in Drafting

 Disclosure should show how a computer would perform

each function claimed (for computer-implemented claims)

 Detailed flow chart, even in non-software specifications  Disclose as many embodiments, variants and equivalents as

possible for the invention

 Include inputs and outputs for each structure in your claim  Include structure in claim (if you do not intend 112(6)

treatment)

• Description of memory, ports, etc.
• However you may want to take advantage of doctrine of

equivalents by providing equivalents in the specification

73

No need to avoid functional claiming. Functional claiming allows the drafter to control the scope of the claim (through the specification).

 Functional claiming allows the prosecutor to maintain

some degree of equivalents for elements amended for reasons of patentability.

Practical Tips in Drafting

74

Practical Tips in Drafting

 Claims: Avoid claiming “black boxes”

 e.g., modules, units (avoid disclosing)  Instead, claim/disclose processors, circuitry, etc.  For non-method software claims, one solution may be to claim a

processor executing instructions that when executed perform a function (rather than claiming a “module”)

 Consider explicit “means” claim set

 By claim differentiation, non-"means" claims may not invoke the

statutory construction.

 Consider CRM claim set

 "A computer readable medium storing instructions for executing a

method performed by a computer processor, the method comprising .... “

75

Practical Tips in Drafting

 Avoid known nonce words when possible so that the burden to

• vercome presumption will be on the challenger.

 If defending a nonce word, argue that the claim describes how

the element is interconnected with other elements or otherwise

• perates.

76

Practical Tips in Prosecution

 Address Examiner’s application of § 112(f)/¶6

 Argue/amend until withdrawn; or  Leave claims as-is and add new non-"means" claims

 Consider Arguing without Examiner raising

 Supplement the “intrinsic” record

 dictionary definitions  expert statements  argument

 Distinguish various claim sets

77

Practical Tips in Prosecution

 Over-reliance on modules, units, etc.

 Consider reissue to correct potential problems in

existing portfolio.

78

Practical Tips in General

 Be deliberate in your decision to use functional claiming  Provide structural/systems/process details in specification for

functional claim recitations:

 Provide structural/systems/process details in specification for functional

claim recitations

 Alternative embodiments  Multiple examples  Varying claim strategies  Overlap substantially with Post-Alice eligibility practices

 Be straight forward