CAFC: Means-Plus-Function Interpretations Absent Trigger Language

KilmerMIT v. Abacus Software (Fed. Cir. 2006).

MIT’s patent covers a system for producing color copies.  Prior to expiration of the patent, the educational behemoth sued several hundred accused infringers. Most of the cases settled, but four parties continued to fight the patent.

After claim construction, the parties stipulated to a judgment of non-infringement. The first half of the appeal focused on when non-explicit claim language can be deemed “means-plus-function.”

But first, the 2–1 majority began their opinion with an announcement that the appellate court should only decide claim construction issues that served as the basis of the noninfringement judgment — and not any other claim construction issue.  In addition, the appellate panel had some trouble with the construction because there was no information in the record regarding the accused devices.

Even with respect to the claim construction issues on which the judgment is based we perceive a problem with the mechanism by which this case has been litigated. As in Lava Trading, the record does not disclose the nature of the accused devices, and our rulings on claim construction in this case unfortunately must be made without knowledge of the accused devices. 

On with the construction where the court searched for meaning of the claims as they would have been interpreted when the patent application was filed back in 1982.

Scanner: Based on a 1982 dictionary definitions, the court agreed that a scanner must have a moving element doing the scanning. Thus, although television cameras can do the same job as a scanner, they are not scanners. (The specification also distinguishes from cameras).  Similarly, the court found that a 1982 scanner requires that the scanned specimen must be placed in close proximity to the scanner.

Colorant Selection Mechanism: At MIT’s suggestion, the lower court held the term “colorant selection mechanism” should be interpreted as a means-plus-function claim even though it lacked the keyword “means.”

[A] limitation lacking the term “means” may overcome the presumption against means-plus-function treatment if it is shown that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.

The panel agreed that terms such as “mechanism,” “means,” “element,” and “device” “typically do not connote definite structure.”  A typographical error in dependent claim 3 sealed the deal.  In that claim, the patent refers to “said colorant selection means” even though only the mechanism had been introduced.

Aesthetic Correction Circuitry: Unlike a mechanism, the CAFC found that “circuitry” provided sufficient structure to avoid means-plus-function interpretation.

Chief Judge Michel Dissented and would have found “circuitry” to imply means-plus-function.

Note: There is more to this case that may be discussed in a later post.

10 thoughts on “CAFC: Means-Plus-Function Interpretations Absent Trigger Language

  1. Sorry, you misquote 35 U.S.C. 102. It is:

    A person shall be entitled to a patent unless–

    (a) [...] or

    (b) [...] or

    ….

    Thus, the use of the disjunctive is correct.

  2. So this is how the Federal Circuit will import the specification into each and every claim term – arbitrarily convert each claim phrase into a means plus function construction!

    It’s time to abolish the Federal Circuit. Or at least remove patent cases from its jurisdiction, and let it devote its attention to appeals from disgruntled postal workers.

  3. I thought the notable thing about this case was that it set the stage to add the term ‘circuit’ to presumptively provide sufficient structure in circuit-plus-function to defeat being interpreted as a means-plus-function when the function of the circuit is disclosed. Circuit may possibly be on par with the term ‘means’ that does the opposite.

    This is a type of inference that is likely to do more harm than good as it invites claim drafting using the term circuit to broadly claim a variety of features.

    On the other hand, if the function of the circuit can be performed by software, circuit-plus-function does not cover such software, which ultimately is also implemented by circuits. Possibly, this invites arguments about dedicated circuits and those with significant non-infringing uses.

    My main beef with the opinion was that it seems to make a circuit obvious once a function for it has been defined. This seems to be far too silly to be a holding according to the ‘circuit for analyzing case law’ relied upon by me.

  4. Dennis wrote “Note: There is more to this case that may be discussed in a later post”.

    Perhaps you would like to comment on the holding on page 11 that, once again, the CAFC declares that the word “or” is always a disjunctive; ignoring the 2 other grammatical functions the word serves, that of being a conjunctive, and that of being explanatory.

    In the present case, by assuming “or” is disjunctive, the case for a camera being a scanner is dismissed out of hand, as being “explicitly distinguishe[d]“.

    Yet if “or” is taken in its explanatory meaning, the exact opposite conclusion is reached – they would be “explictly” stated as being the same thing…

    I realise Americans seem to use “or” more frequently that other English speakers do, but the CAFC should be particularly lively to “or” not being a disjunctive all the time given 35USC102 where we read “A person shall not be entitled to a patent unless -
    a) [...] or
    b) [...] or
    .
    .
    .
    g)2).

    Here “or” is clearly conjunctive.

    (Here I must grant an honorable mention to CJ.Mayer; see his dissent in Kustom Signals 60USPQ2d 1135, where he clearly demonstrates his knowledge of the problem).

  5. BandarBush wrote, “I was thinkning that Step plus funciton claims, although rarely used or litigated, might be useful in software claims. I’m really interested in your insight.”

    Rather than using a step-plus-function claim, most practictioners will opt for reciting a method including the step — or a computer-readable medium including instructions configured to perform the step.

    The reason is that the method claim or the computer-readable medium claim will read on *all* ways to perform the step–giving you greater breadth. (Of course, there is some risk that the broader claim could fail for non-enablement, but that typically has not happened in software cases.)

    If someone wanted to have a much narrower claim, they could use a step-plus-function, which would limit the claim to the disclosed processes for performing the step and their equivalents. This might be advantageous where there are other prior art methods of performing the step that are not equivalent. Unfortunately, examiners are likely to reject a step-plus-function claim where the prior art performs the same function — even though the prior art process is not an equivalent of those disclosed in your patent application.

  6. Hello. I’m new to the bog. I’m a 2L writing a LawReview comment on Means and Step plus function claims but I’m having a difficult time figuring out precisely what to write about since I haven’t had any IP courses yet. If any of the practitioners/bloggers would like to see a particule issue cleared up (or at least well researched) reply to this post or send me an email at nvriley@gmail.com

    I know there’s been some controversy over what congress meant when they enacted paragraph 6 but that seems moot now considering the explosion of means plus function claims over the past decade and Supreme Court’s opinion in Hilton. I was thinkning that Step plus funciton claims, although rarely used or litigated, might be useful in software claims. I’m really interested in your insight.

  7. This case can be distinguished by the CAFC later because claim 3 clearly supports the interpretation of claim 1. Why would MIT suggest the lower court to interpret colorant “selection mechanism” as a means-plus-function element thus being narrower as a matter of law? To overcome an invalidity argument based upon the indefiniteness? If terms such eye glass mechanism, clock mechanism, fastener mechanism or in this case, color selection mechanism are going to be considered indefinite then we have some developing bad case law. As long as the specification clearly supports and defines the terms then there should be no indefinite issues.

  8. Malcolm Mooney’s lament about patent quality reminds me of the British distress at EPO laxity in relation to precision use of English. In the past, UK patents with an ambiguity were found invalid. The EPO, however, is operating in the real world of today, where nearly everybody (Inventors, attorneys, Examiners) is using English, with more or less precision, but all as a foreign language. The patents courts of Europe then have to cope with the output of the EPO, but they do OK (lack of clarity not a ground of revocation). The German national Patent Office might be able indefinitely to continue upholding the standard in German, because all players are German native speakers but, these days, an English-speaking PTO doesn’t have that luxury.

  9. “[A] limitation lacking the term “means” may overcome the presumption against means-plus-function treatment if it is shown that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”

    So much for indefiniteness as a requirement for claim validity.

    Didn’t someone say here recently that patents were difficult to draft? Seems to me that the law is so generous that it offers practicioners an opportunity to take advantage of “means plus function” claim language without requiring that the practicioner meet the oh-so-rigorous, brain-stumping standard of actually including the words “means” and “function” in their claim! If only 4th graders were given such latitude.

    “A typographical error in dependent claim 3 sealed the deal. In that claim, the patent refers to “said colorant selection means” even though only the mechanism had been introduced.”

    When I first started practicing patent law, claims which recited terms which lacked an antecedent basis were indefinite. Not any more!

    The take home message here would appear to be that neither the PTO nor the Federal Circuit gives a crap about patent quality. If you’ll excuse me, I’m going to read “Chef America” so I can convince myself again that it really matters whether I am drunk or straight when I write patent claims.

  10. Isn’t this sort of patent about the best sort of argument for keeping open the possibility of continuations on patent applications?

    While I haven’t read through the details of the patent app, it seems highly unlikely that any idea of note described in the patent app has any real dependency on the image being acquired coming from a scanner as opposed to another type of imager. Yet the claims were probably expressed in terms of scanners for no more compelling reason than that was the standard image acquisition device used at the time of the patent app.

    If you’re going to talk about obvious, what’s more obvious than that the same ideas would apply to another kind of imager?

    One very good reason to keep open the possibility of continuations is to address these clear shortcomings in the use of language.

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