Sec. 112(6/f) Claim Language
- BASICS: “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.” 35 U.S.C. § 112(6/f). Even if raised in the context of an “indefiniteness” Summ. J. motion, “the issue of whether a claim term is governed by § 112 ¶ 6 is a claim construction issue.” Lighting Ballast III (Fed. Cir. 06/23/15) (challenger who lost indefiniteness argument in Markman proceedings did not waive it by not raising it again in JMOL motion or objecting to jury instructions). Congress “struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed, namely, by restricting the scope of coverage to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.” Williamson (Fed. Cir. 06/16/15) (en banc portion). May not treat a “means-plus-function limitation in [a] patentability analysis as if it were a purely functional limitation.” IPCom (HTC II (IPCom)) (Fed. Cir. 07/07/17) (vacating PTAB reexamination decision for PTAB’s failure to identify algorithm in Spec. corresponding to claim-recited function, after PTAB rejected patent owner’s proposed algorithm). In part, this provides a provisional safe haven from functional-claiming “indefiniteness,” if Spec. satisfies its requirements. But, claims invoking this provision often are invalid for not being particular and distinct, for failure of the patent to disclose the required structure. (See “Particular And Distinct Claims (aka Indefiniteness)” (D.8) below.)
a) whether sec. 112(6/f) treatment invoked
- Williamson: “Purely Functional,” “Black Box,” Or “Generic Placeholder” Claim Elements Trigger Sec. 112(6/f); “Definite,” “Particular,” And “Sufficient” Structure In Element Avoids Sec. 112(6/f) Construction: Word “means” creates presumption that Sec. 112(6/f) is invoked and absence of word “means” creates presumption that it is not. But, overruling Fed. Cir. case law since 2004, latter, reverse presumption is not “strong.” Rather, “the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” or “or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson (Fed. Cir. 06/16/15) (en banc portion). “We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure.’” Williamson (Fed. Cir. 06/16/15) (en banc portion). Coined term that is “simply an abstraction that describes the function being performed” is not sufficient structure to avoid invoking Sec. 112(6/f). Advanced Ground Info. (Fed. Cir. 07/28/16) (“symbol generator” for the generation of symbols). “To determine whether a claim recites sufficient structure, ‘it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.’” Chrimar (Fed. Cir. 05/08/18) (non-precedential) (aff’g terms did not invoke Sec. 112(6/f): “A claim term that has an understood meaning in the art as reciting structure is not a nonce word triggering § 112, ¶ 6.”); Skky (Fed. Cir. 06/07/17) (aff’g PTAB obviousness decision; “wireless device means” does not invoke Sec. 112/6 because “the full term recites structure, not functionality; the claims do not recite a function or functions for the wireless device means to perform, and ‘wireless device’ is ‘used in common parlance . . . to designate structure;’” despite Examiner saying it invoked Sec. 112/6, despite IPR petition asserting the same, and despite word “means” triggering presumption of triggering Sec. 112/6) (quoting TecSec (Fed. Cir. 10/02/13)).
- Post-Williamson; Claims Using “Means”: Shperix (Fed. Cir. 07/25/17) (non-precedential) (aff’g PTAB obviousness decision; “processor means at the handset for displaying keyed alphanumeric data on the screen and concurrently transmitting the alphanumeric data and commands to the base station” triggers Sec. 112(6/f)); Skky (Fed. Cir. 06/07/17) (aff’g PTAB “wireless device means” does not invoke Sec. 112/6 because “the full term recites structure, not functionality; the claims do not recite a function or functions for the wireless device means to perform, and ‘wireless device’ is ‘used in common parlance . . . to designate structure’”); Lighting Ballast III (Fed. Cir. 06/23/15) (aff’g district court, based on clear error review of fact finding, judgment that “means” element does not trigger Sec. 112(6/f), based on expert and inventor testimony that PHOSITA “would understand the claimed ‘voltage source means’ to correspond to a rectifier, which converts alternating current (“AC”) to direct current (“DC”), or other structure capable of supplying useable voltage to the device.” “The limitations convey a defined structure to one of ordinary skill in the art.”)
- Post-Williamson; Claims Not Using “Means”—Triggering Sec. 112(6/f): Intelligent Automation (Fed. Cir. 01/30/20) (non-precedential) (aff’g that “determining a time when torque reaches a maximum” triggers Sec. 112(6/f) in method claim and in system claim (where prefaced by “a control circuit for”) because preface does not “provide enough description of the structure to render the limitation structural, rather than functional”); Fiber (Fed. Cir. 11/21/19) (non-precedential) (aff’g district court that “control” invokes Sec. 112(6/f) in part because control depicted in figure was a “generic box with no indication of any structure”); Grecia (Fed. Cir. 08/20/19) (non-precedential) (aff’g district court finding that “customization module” invokes Sec. 112(6/f), in part because nothing in claim recites “how [it] operates,” and finding of indefiniteness); MTD Products (Fed. Cir. 08/12/19) (vacating PTAB obviousness decision; contrary to PTAB; “a mechanical control assembly … configured to …” triggers Sec. 112(6/f), as patent owner argues; in part because similar to other nonce terms, “configured to” format defines functions, and term used in prior art to describe “a wide variety of structures with varying functions,” despite Spec. describing a corresponding structural embodiment); Diebold Nixdorf (Fed. Cir. 08/15/18) (rev’g ITC; term “cheque standby unit” is a means-plus-function term, and, lacking structural support, indefinite; “claims describe the term ‘cheque standby unit’ solely in relation to its function and location in the apparatus;” Spec. describes no specific structure; figure depicts unit as a vertical line; patent owner’s expert “offered purely functional definitions” and in effect testified it meant “any structure capable of performing the claimed function;” and there was no evidence “in the form of dictionary definitions or otherwise—that ‘cheque standby unit’ was reasonably well understood by persons of ordinary skill in the art to refer to a structure or class of structures.”); Advanced Ground Info. (Fed. Cir. 07/28/16) (aff’g indefiniteness; “‘symbol generator [e.g., “a symbol generator connected to [a] CPU and [a] database for generating symbols on [a] touch screen display screen”] invokes the application of § 112, ¶ 6 because it fails to describe a sufficient structure and otherwise recites abstract elements ‘for’ causing actions, or elements ‘that can’ perform functions,” even though terms “symbol” and “generator” were known in the field); Media Rights (Fed. Cir. 09/04/15) (“compliance mechanism” triggers Sec. 112(6/f): not commonly known in art as name for a particular structure and Spec. describes it only by its functions, connections and optional “functional components,” not in specific structural terms); Williamson (Fed. Cir. 06/16/15) (panel portion) (aff’g “indefiniteness”; claim element does trigger Sec. 112(6/f): “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,” because uses format of “means” element and replaces “means” with “nonce word” “module” which, like “means,” is a “generic,” “black box” “description for software or hardware that performs a specified function,” and the written description’s description of the element “fails to impart any structural significance” to the term.”))
- Post-Williamson; Claims Not Using “Means”—Not Triggering Sec. 112(6/f): Samsung (Fed. Cir. 02/04/20) (rev’g PTAB ruling; “digital processing unit” does not invoke Sec. 112(6/f), “the term ‘digital processing unit’ clearly serves as a stand-in for a ‘general purpose computer’ or a ‘central processing unit,’ each of which would be understood as a reference to structure in this case, not simply any device that can perform a particular function”); Tek Global (Fed. Cir. 03/29/19) (aff’g “conduits connecting the container” does not trigger Sec. 112(6/f) in part because applicant said so in prosecution and also in view of claims and Spec.; “although connoting precise physical structure is not a necessary condition to avoid § 112, ¶ 6 application, it is generally sufficient.”); Zeroclick (Fed. Cir. 06/01/18) (rev’g holding that following trigger Sec. 112(6/f): “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or 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.” Skilled artisan “could reasonably discern from the claim language that the words [“program” and “user interface code” as used in the claims] are used not as generic terms or black box recitations of structure or abstractions, but rather as specific references to conventional graphical user interface programs or code, existing in prior art at the time of the inventions.”); Chrimar (Fed. Cir. 05/08/18) (non-precedential) (aff’g terms (“central piece of equipment,” “Ethernet terminal equipment,” and “BaseT Ethernet terminal equipment” followed by “to detect,” “to control,” “to provide,” “to distinguish,” “to draw,” “to result,” and “to convey”), did not invoke Sec. 112(6/f)).
- Now-Overruled Case Law On Triggering Sec. 112(6/f): There is a “strong” “presumption” that a claim term other than “means” does not invoke Sec. 112(6/f). Lighting World (Fed. Cir. 09/03/04); Robert Bosch (Fed. Cir. 10/14/14) (presumption overcome for “program recognition device” and “program loading device” because “device” is non-structural nonce word and other terms in phrase are purely functional and neither Spec. nor dependent claims defined or described in structural terms). When “means” is not used, test is whether the claim term is used in the pertinent art “to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Mass. Inst. of Tech. & Elecs. for Imaging (Fed. Cir. 09/13/06); Williamson (Fed. Cir. 11/05/14) (2-1) (“a distributed learning control module for…” not Sec. 112(6/f): “module” has dictionary meanings connoting hardware or software structure in the computer arts; context in claims and Spec. suggest structure), vacated, Williamson (Fed. Cir. en banc order 06/16/15), Williamson (Fed. Cir. 06/16/15) (panel portion) (different result: language does trigger Sec. 112(6/f) and claim is indefinite); EnOcean (Fed. Cir. 01/31/14) (“signal receiver for receiving” does not trigger Sec. 112/6, as term “receiver” is understood in the art; rev’g BPAI); Power Integrations (Fed. Cir. 03/26/13) (“soft start circuit,” with recited input, output and straightforward function, connotes “sufficiently definite structure”). But see Apple (Fed. Cir. 04/25/14) (2-1) (claim term “heuristics,” construed in light of Spec., provides sufficient structure; when “means” is not used: to determine whether claim is in means-plus-function format “we must construe the claim limitation to decide if it connotes ‘sufficiently definite structure’ to a person of ordinary skill in the art, which requires us to consider the specification (among other evidence).”) [distinguished in Grecia (Fed. Cir. 08/20/19) (non-precedential) noting that Apple was decided under “strong presumption” rule.]
- Overruled 2014 Williamson Panel Opinion: “The district court, in characterizing the word ‘module’ as a mere nonce word, failed to appreciate that the word ‘module’ has understood dictionary meanings as connoting either hardware or software structure to those skilled in the computer arts. …. The IBM Corporation, IBM Dictionary of Computing 439 (1st ed.1994) defines ‘module’ as a ‘packaged functional hardware unit designed for use with other components’ and a ‘part of a program that usually performs a particular function of related functions.’ See also … (defining ‘module’ as a ‘self-contained hardware or software component that interfaces with a larger system’); … (defining ‘module’ as a ‘programming or specification construct that defines a software component’ and a ‘component of a hardware system that can be subdivided’). These definitions all show that the term ‘module’ has a structure connoting meaning to persons of ordinary skill in the computer arts…. Here, the ‘distributed learning control module’ is claimed as a part of the definite structure ‘distributed learning server’ and ‘receive[s] communications transmitted between the presenter and the audience member computer systems,’ ‘relay[s] the communications to an intended receiving computing system,’ and ‘coordinat[es] the operation of the streaming data module.’ These claimed interconnections and intercommunications support the conclusion that one of ordinary skill in the art would understand the expression ‘distributed learning control module’ to connote structure…. The specification also makes clear that the distributed learning control module includes software that runs on a portion of the distributed learning server. While the supporting specification describes the claimed expression ‘distributed learning control module’ in a high degree of generality, in some respects using functional expressions, it is difficult to conclude that it is devoid of structure.” Williamson (Fed. Cir. 11/05/14) (2-1) (“a distributed learning control module for…” does not trigger Sec. 112(6/f)), vacated, Williamson (Fed. Cir. en banc order 06/16/15), Williamson (Fed. Cir. 06/16/15) (panel portion) (different result: language does trigger Sec. 112(6/f) and claim is indefinite).
- For A Claim Element To Trigger Sec. 112(6/f), Claim Must Recite Function That The Element Performs: Skky (Fed. Cir. 06/07/17) (aff’g PTAB obviousness decision; “wireless device means” does not invoke Sec. 112/6 because “the full term recites structure, not functionality; the claims do not recite a function or functions for the wireless device means to perform, and ‘wireless device’ is ‘used in common parlance . . . to designate structure’”).
- Reciting Or Implying That Function Is Computer Or Processor Implemented Is Not Enough To Connote Definite Structure: Each of Williamson (Fed. Cir. 06/16/15) (functions require “a special purpose computer”), Media Rights (Fed. Cir. 09/04/15) (“these functions are computer-implemented functions”), and Advanced Ground Info. (Fed. Cir. 07/28/16), involved claims reciting computer or processor implemented software functions yet were deemed to trigger Sec. 112(6/f) construction.
- Reciting Location Relative To, Connections To, Or Interactions With Other Elements May Not Be Sufficient To Recite Or Connote Definite Structure: Each of Williamson (Fed. Cir. 06/16/15) (“distributed learning control module” element received communications from one element and relayed them to another), Media Rights (Fed. Cir. 09/04/15) (“compliance mechanism” was “coupled to” three other elements in the claim; “Nothing in the written description … adds sufficiently to the meaning of the term’s structure; it only describes the term’s function and interaction with other parts in the system.”), and Advanced Ground Info. (Fed. Cir. 07/28/16) (“a symbol generator connected to said CPU and said database for generating symbols on said touch display screen;” “symbol generator in said CPU that can generate symbols….”), involved claim elements recited in claims and/or Spec. as being connected to, part of, or interacting with, other claim elements, but those recitations did not sufficient to recite or connote the required definite structure. Accord Diebold Nixdorf (Fed. Cir. 08/15/18) (rev’g ITC; claims recited and Spec. described location of “cheque standby unit” relative to other elements, and its functions, but not its specific structure, and thus triggered Sec. 112(6/f) construction.)
- Spec. Disclosing Structural Embodiment Corresponding To Claim Element Does Not Mean Claim Element Connotes Structure Or Avoids Invoking Sec. 112(6/f): “That the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures.” MTD Products (Fed. Cir. 08/12/19) (vacating PTAB obviousness decision; Spec. “does not demonstrate that the patentee intended to act as its own lexicographer and define the nonce term “mechanical control assembly” as the “ZTR control assembly” of the preferred embodiment.”)
- Preponderance Burden Of Production To Overcome Presumptions For Or Against Triggering Of Sec. 112(6/f): Burden of production to overcome rebuttable presumption created by use or non-use of “means” “must be met by a preponderance of the evidence.” Apex (Fed. Cir. 04/02/03); Zeroclick (Fed. Cir. 06/01/18) (rev’g holding that following trigger Sec. 112(6/f): “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or 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” because challenger provided no intrinsic or extrinsic evidence to overcome presumption.); Advanced Ground Info. (Fed. Cir. 07/28/16) (aff’g indefiniteness; where claim does not use “means,” “the challenger must establish by a preponderance of the evidence that the claims are to be governed by § 112, ¶ 6.”)
- (Pre-Williamson) Rebutting Sec. 112(6/f) Presumption Created By “Means”: Use of “means” triggers rebuttable presumption that Sec. 112(6/f) is invoked. “Sufficient structure exists [to rebut that presumption] when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” TriMed (Fed. Cir. 01/29/08); but see Inventio AG (Fed. Cir. 06/15/11) (the claim “must ‘specif[y] the exact structure that performs the functions in question,’” but noting that “where the claims recite the term ‘means,’ we have considered the written description to inform the analysis of whether the claim recites sufficiently definite structure to overcome the presumption.”) (citation omitted). See Chicago Bd. (Fed. Cir. 05/07/12) (“system memory means” is means-plus-function element (dictum); corresponding structure is “system memory.”); TecSec (Fed. Cir. 10/02/13) (“system memory means” for storing data, and “digital memory means,” do not invoke Sec. 112, ¶ 6, the latter in part because claim recites no function [but citing case law (Lighting World) on different issue (whether term other than “means” invokes Sec. 112/6))]); Lighting Ballast I (Fed. Cir. 01/02/13) (Sec. 112/6 element: “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals,” rejecting expert testimony for failure to show “voltage source” was “used synonymously with a defined class of structures at the time the invention was made”) (non-precedential), vacated en banc (Fed. Cir. 03/15/13) (to revisit Cybor), reinstated (Fed. Cir. 02/21/14), vacated ivo Teva (U.S. 01/26/2015), on remand Lighting Ballast III (Fed. Cir. 06/23/15) aff’g trial court’s claim construction that claim term did not trigger Sec. 112(6/f) and claim is not indefinite).
- (Pre-Williamson) When Sec. 112(6/f) Triggered Without Using Word “Means”: There is a “strong presumption” that a claim term other than “means” does not invoke Sec. 112(6/f). Inventio AG (Fed. Cir. 06/15/11) (“modernizing device” and “computing unit” in these claims do not trigger Sec. 112(6/f)) (distinguished in Robert Bosch (Fed. Cir. 10/14/14)). A claim term does not trigger Sec. 112(6/f), if it suggests structure, even if not a specific structure. See Lighting World (Fed. Cir. 09/03/04) (“Thus, while it is true that the term ‘connector assembly’ does not bring to mind a particular structure, that point is not dispositive. What is important is whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’”); Mass. Inst. of Tech. & Elecs. for Imaging (Fed. Cir. 09/13/06) (“it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.”); Baran (Fed. Cir. 08/12/10) (“The relevant inquiry is whether the [claim] term at issue is purely functional.”) In determining whether claim term suggests structure, court should look to intrinsic and perhaps extrinsic evidence same as any other construction. Inventio AG (Fed. Cir. 06/15/11); Powell (Fed. Cir. 11/14/11) (“dust collection structure” is not Sec. 112(6/f) element: “the written description identifies several prior art patents that disclose various types of dust collection structures.”); Flo Healthcare (Fed. Cir. 10/23/12) (“a height adjustment mechanism for altering the height of the horizontal tray” does not invoke Sec. 112(6/f): “the noun “adjustment,” … has a reasonably well-understood meaning as a name for a structure”); Mas-Hamilton (Fed. Cir. 09/10/98) (“lever moving element” and “movable link member” trigger Sec. 112(6/f)).
- Method Claims May Include “Means Plus Function” Elements, And Reciting Step Taken By An Apparatus May Imply Function Of That Apparatus: Method claims may recite elements triggering Sec. 112(6/f) treatment, and reciting steps taken by an apparatus may be treated as reciting functions that apparatus can perform. E.g., Media Rights (Fed. Cir. 09/04/15) (aff’g judgment of indefiniteness on the pleadings (filed and argued during Markman proceedings); “compliance mechanism” in method claim’s step “controlling a data output pathway of said client system with said compliance mechanism by diverting a commonly used data pathway of said media player application to a controlled data pathway monitored by said compliance mechanism” triggers Sec. 112(6/f), in part because “the claims simply state that the ‘compliance mechanism’ can perform various functions.”); Saffran (Fed. Cir. 04/04/13) (both method and device claims recited a “release means for ….”)
- Step Plus Function Element: “The word ‘means’ clearly refers to the generic description of an apparatus element, and the implementation of such a concept is obviously by structure or material. We interpret the term ‘steps’ to refer to the generic description of elements of a process, and the term ‘acts’ to refer to the implementation of such steps.” “The paragraph is implicated only when steps plus function without acts are present.” Overall result of method is not same as function of an individual step: “Performing a series of steps inherently produces a result, in this case the removal of water vapor from the analyte slug, but a statement in a preamble of a result that necessarily follows from performing a series of steps does not convert each of those steps into step-plus-function clauses.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1582-83 (Fed. Cir. 1997) (despite parallelism with apparatus claims, following step is not in step plus function format: “‘the step[s] of … passing the analyte slug through a passage’” because the step of “passing” is “not individually associated in the claim with functions performed by the” step). Absence of “step for” language creates presumption that method step does not trigger Sec. 112(6/f). Generation II (Fed. Cir. 08/15/01). Use of “step for” triggers presumption of Sec. 112(f/6) treatment, and even then claim must not recite acts in support of that step. Masco (Fed. Cir. 08/28/02) (rev’g trial court’s treatment of claim steps as Sec. 112(f/6) step.). “Where a method claim does not contain the term ‘step[s] for,’ a limitation of that claim cannot be construed as a step-plus-function limitation without a showing that the limitation contains no act.” Id. “In general terms, the ‘underlying function’ of a method claim element corresponds to what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. ‘Acts,’ on the other hand, correspond to how the function is accomplished. …. If a claim element recites only an underlying function without acts for performing it, then § 112, ¶ 6 applies even without express step-plus-function language. …. If the language of the claim element does not expressly state its function, the function of that element may nonetheless be discernible from the context of the overall claim and the disclosure in the specification. …. [I]f this claim limitation had specified only the underlying function, namely, ‘adhering the mat to the foundation,’ without recital of specific acts for ‘adhering,’ § 112, ¶ 6 would have governed, despite the lack of ‘step for’ language.” Seal-Flex (Fed. Cir. 04/01/99) (Rader, J. concurring). Cf. Lemley, Software Patents and the Return of Functional Claiming (Wisc. Law Review 10/12/12) (“The intent of this statute was to allow functional claiming only when it was limited to particular implementations of that function, not when it encompassed all feasible ways of achieving the goal.”).
b) construction of sec. 112(6/f) claim element
- Corresponding Structure Must Be Clearly Linked In Spec. To The Claim-Recited Function: Spec. must disclose the structure and clearly link it to the claimed function. Medtronic (Fed. Cir. 04/20/01) (structure must be clearly linked to claimed function, e.g., in Spec., dependent claims, or prosecution history); MobileMedia (Fed. Cir. 03/17/15) (rev’g infringement judgment based on too-broad interpretation of corresponding structure). Cloud Farm (Fed. Cir. 01/09/17) (non-precedential) (aff’g indefiniteness for lack of corresponding structure in Spec.); Telcordia (Fed. Cir. 07/06/10) (linking disclosure sufficient in view of supporting expert testimony and presumption of validity).
- Corresponding Structure Is Only That Portion Of Disclosed Structure Necessary To The Claimed Function: The corresponding structure is only that part of the disclosed structure necessary to performing that claimed function. John Mezzalingua Assocs. (Fed. Cir. 04/28/11) (non-precedential); Univ. of Pitt. (Fed. Cir. 04/10/14) (corresponding algorithm is only what is necessary to perform the function, here two-step algorithm described in the background (“(1) identifying at least one fiducial from the image signals, and (2) tracking the movement of the fiducial(s), and equivalents,” not more detailed optional implementations later in Spec.).
- “Structure” Need Not Be Physical And May Be An Algorithm: “The ‘structure’ of computer software is understood through, for example, an outline of an algorithm, a flowchart, or a specific set of instructions or rules.” Apple (Fed. Cir. 04/25/14) (2-1) (in context of overcoming presumption that claim element “heuristics” is not a means-plus-function element); Business Objects (Fed. Cir. 01/06/05) (corresponding structure may be an algorithm). See Apple V (Fed. Cir. 02/26/16) (in part because hardware “alone, does nothing without software instructions telling it what to do,” the district court correctly included software as part of the corresponding structure for “means for transmission.”), reinstated Apple VI (Fed. Cir. 10/07/16) (en banc) (7-3); Sony (Fed. Cir. 05/22/19) (2-1) (identifying algorithm as flowchart in patent and corresponding narrative description thereof).
- If Function Is Implemented By Computer Or Other Programmed Machine Rather Than A Circuit Or Other Hardware, The Corresponding “Structure” Must Include An Algorithm: Sony (Fed. Cir. 05/22/19) (vacating PTAB obviousness decision and rev’g construction that omitted algorithm; “reproducing means for reproducing the audio data …” is construed as computer implemented despite a hardware (circuit) embodiment also being disclosed, because Spec. refers to “the processing” of the “controller” part of the reproduction device as shown in a flowchart, and does not “describe or refer to the circuitry of the controller that would be required for a hardware controller to perform the claimed function”).
- Corresponding Structure Encompasses Each Embodiment Disclosed And Linked In Spec., Even If Only Briefly Mentioned: Sec. 112(6/f) element embraces each embodiment corresponding to the claimed function, even if an embodiment is only briefly mentioned. Versa (Fed. Cir. 12/14/04) (a one sentence mention of an alternative embodiment is enough to make that an alternative structural counterpart to a means plus function element). But, does not include structures disclosed not in the Spec. but rather only in prior art listed in the patent Spec. Pressure Prod. (Fed. Cir. 03/24/10).
- Spec. Must Identify The Corresponding Structure, Not Merely Reference It Generically Or State That Known Or Conventional Ways May Be Used: “A bare statement that known techniques or methods can be used does not disclose structure.” Biomedino (Fed. Cir. 06/18/07); see Twin Peaks (Fed. Cir. 05/26/17) (non-precedential) (aff’g indefiniteness; distinguishing enablement from requirement of specifying the corresponding structure: “by engaging in functional claiming under § 112 ¶ 6, a patentee is entering into the bargain of limiting its open-ended functional claim term to what is disclosed and their equivalents, which may not be coextensive with the full enabled scope”); “Triton Tech (Fed. Cir. 06/13/14) (Spec. stated that the claim-recited numerical integration function is performed in a “conventional manner”); Saffran (Fed. Cir. 04/04/13) (corresponding structure limited to “hydrolyzable bonds,” not more generic “chemical bonds and linkages.”) (2-1) (rev’g judgment of infringement); Default Proof (Fed. Cir. 06/16/05) (“This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.”); Med. Instrumentation (Fed. Cir. 09/22/03) (that PHOSITA would know of structure which could perform the function is insufficient, the Spec. must disclose the structure); Mettler-Toledo (Fed. Cir. 02/08/12) (where patent discloses a single embodiment (multiple slope integrating A/D converter), the corresponding structure is limited to that embodiment even if generic devices were known in the art for performing such function and there is a reference in abstract to such a generic device (A/D converter), as that reference was not linked to the claimed function) (aff’g Summ. J. of non-infringement); Bennett Marine (Fed. Cir. 09/19/13) (non-precedential) (only one embodiment disclosed even though shown more generically in one figure).
- Corresponding Structure Likely Cannot Be Incorporated By Reference: “Material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause.” Default Proof (Fed. Cir. 06/16/05); Atmel (Fed. Cir. 12/28/99) (2-1) (title of non-patent publication sought to be incorporated sufficient to disclose corresponding structure, but suggesting that necessary structure cannot be incorporated by reference); Fiber (Fed. Cir. 11/21/19) (non-precedential) (aff’g indefiniteness; material incorporated by reference cannot provide the corresponding structure for a means-plus-function element). But see Otto Bock (Fed. Cir. 02/18/14) (non-precedential) (corresponding structure may be incorporated from a U.S. pat. or patent app. but not via incorporation by reference of a non-patent publication, without mentioning if application was published); 37 C.F.R. § 1.57(d) (support for a Sec. 112(6/f) element is “essential material,” and may be incorporated from a U.S. patent or published U.S. pat. application).
- Corresponding Structure Cannot Be A Human: “a human being cannot constitute a ‘means’” within the scope of § 112, ¶ 6.” Voter Verified (Fed. Cir. 11/05/12).
- Sec. 112(6/f) Construction And Computers/Processors: see discussion below under Indefiniteness (e.g., “Aristocrat”).
- Claim Element Comprises Claim Language And Corresponding Structure And Equivalents: Means-plus-function claim limitations “‘comprise not only the language of the claims, but also the structure corresponding to that means that is disclosed in the written description portion of the specification (and equivalents thereof).’” Uniloc (Fed. Cir. 10/23/17) (non-precedential) (Sec. 112(6/f) element not supported by provisional application’s disclosure, so claim not entitled to provisional’s filing date).
- Expert Testimony Cannot Create Structure Where None Is Adequately Disclosed In The Spec.: Fiber (Fed. Cir. 11/21/19) (non-precedential) (aff’g indefiniteness; “the definiteness requirement is that the specification adequately disclose corresponding structure. Expert testimony cannot create structure where none is adequately disclosed in the specification.”).
- “Structure” Cannot Be Purely Functional (E.g., Any Circuit That Performs The Function): Identifying structure as “any circuit that performs the claim function” is “no more specific than defining” the means “in purely functional terms” which is “prohibited.” Tomita I (Fed. Cir. 12/08/14) (non-precedential) (rev’g district court claim construction).
- Breadth Of Structural Equivalents May Be Broader If Specifics Unimportant To Claimed Invention: when the specifics of the disclosed structure are unimportant to the claimed invention, the scope of structural equivalents may be broader. Uniloc (Fed. Cir. 01/04/11) (rev’g JMOL of no infringement).
c) relationship to claim differentiation
- Claim Differentiation Does Not Preclude Dependent Claim’s Structure Being The Corresponding Structure For A Sec. 112(6/f) Element: That dependent claim expressly recites the structures identified in the court’s construction of the Sec. 112(6/f) limitation does not argue against that construction, because the Sec. 112(6/f) limitation is still broader than the dependent claim because it also embraces structural equivalents to those structures. Pressure Prod. (Fed. Cir. 03/24/10).
- The Opposite Of Claim Differentiation Applies: Where a dependent claim recites that the means-plus-function element comprises a particular structure, that supports a construction that such structure is the “corresponding structure” for that element. Medtronic (Fed. Cir. 04/20/01).
AIA: Sec. 112, ¶¶ 1-6 are now Sec. 112(a)-(f) for applications filed on or after Sept. 16, 2012. Pub. L. No. 112-29, § 4(c), (e).