Means-Plus-Function Element Found Indefinite Without Corresponding Structure

Biomedino v. Waters Technology (Fed. Cir. 2007).

Biomedino holds a patent for removing psychoactive drugs from a blood sample for toxicology studies. The district court found the patent invalid as indefinite under 35 U.S.C. 112 ¶ 2. In particular, the lower court held that the recited limitation "control means for automatically operating [a] valving" was indefinite because the specification did not include any structure corresponding to the means-plus-function language.  On appeal, the CAFC affirmed.

35 U.S.C. 112 ¶ 6 allows a patent applicant to broadly claim a "means" for performing a specific function. That claim, however, must be backed-up by a patent specification that describes "some structure which performs the specified function."

Here, the patentee had indicated that the invention “may be controlled automatically by known differential pressure, valving and control equipment.” This disclosure was, however, insufficient.

[A] bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring “corresponding structure, material, or acts described in the specification.

In addition, the court held that the structure must be disclosed in the specification even if one of skill in the art could implement a structure without such a disclosure.

Invalidity affirmed.

36 thoughts on “Means-Plus-Function Element Found Indefinite Without Corresponding Structure

  1. Article III Heirarchist wrote “D’oh! You’re right Lionel. There is no distinction between judges and justices. Should we ever have the pleasure of your oral advocacy at the Federal Circuit, please, addess one of the panel members as “Justice” or, better yet, “Magistrate.” No one will bat an eye.”

    So, if it’s so simple, you should be able to articulate the difference in a sentence or two. However, from your posts, it’s obvious the best you can do is “because I said so.” I hope you argue better than that before a judge.

    Can anyone else clarify the distinction (if one exists) between a justice and a judge? After 3 years of law school and 7 years of practice, I am still unclear.

  2. Do you think this is peculiar to the ‘means’ language., i.e. if the application had omitted “means”, would the application still be indefinite?

  3. “I don’t see a specific distinction drawn in those sections.”

    D’oh! You’re right Lionel. There is no distinction between judges and justices. Should we ever have the pleasure of your oral advocacy at the Federal Circuit, please, addess one of the panel members as “Justice” or, better yet, “Magistrate.” No one will bat an eye.

  4. Article III Heirarchist – could you elucidate a bit more? I don’t see a specific distinction drawn in those sections.

  5. “How are you distinguishing judges from justices?”

    In the same manner that U.S.C. Title 28 so distinguishes. (See, e.g., secs. 1 & 44(a))

  6. For example, the author could have said the control could be any of x, y, z, but he did not.

  7. Step back,

    Again, I have no idea what your point is. I agree with you 100%. How does anything in your last post contradict what I wrote. I support the decision. The point of the post you originally responded to was that the Applicant could easily have made the claims 112 para 6 compliant by adding a throwaway list of structures. He did not do this. I should say apparently because I have not read the patent.

    I don’t understand where you think we differ.

  8. Lionel,

    Go back and read the actual patent.
    Look at Fig. 6.
    Yes there is a rectangle labeled “CONTROL” in Fig. 6. However, the patentee nowhere describes what that box in the drawing is. He talks about conventional methods that “could be” used. However he never says that the “CONTROL” box in Fig. 6 is structured to carry out such conventional methods. He says zilch about the “CONTROL” box in Fig. 6. That is why his specification fails to comply with 35 USC 112 para 6.

  9. Step back, I don’t follow you at all.

    There are no method sentences or apparatus sentences. I can describe a function that needs to be done and list some structures that could perform it. I do not need to have a sentence describing an apparatus to throw in some exemplary structures.

  10. Article III hierarchist wrote “Considering there are no justices on the CAFC”

    How are you distinguishing judges from justices? I believe the terms are used interchangeably.

  11. “All it would have taken was a single sentence by the Applicant that included some exemplary structures, or even altering the existing sentence like so – “…by known differential pressure, valving and control equipment, such as, for example, …..” and then simply listing a few differential pressure or valve means.”

    Lionel,

    No.
    You’re missing on an important lesson.
    That one sentence was talking about a “method”, not about any apparatus.

    The patent should have said: Box 6xx of Fig. 6 is an electronic device such as a computer that is responsive to a real time clock and [other inputs] and controls the valves in accordance with the methods described herein. Now you have “structure”. A method sentence does not of itself describe structure.

    My suspicion is that the attorney/agent who wrote the biotech patent had no background in electronics, control systems, etc. and just didn’t know what he/she didn’t know.

  12. So, no one thinks the decision in this case was due, not so much to 35 USC 112(6), but rather to the string of divisions and continuations filed before the patent issued? The patent certainly did describe the “acts” of the control means, and 35 USC 112(6) says “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof” (emphasis “or”).

    Act: “the hapten-antibody is withdrawn from the second chamber 32 and delivered to a first chamber 34 of a cleaning column”

    Act: “Glycine phosphate buffer pH 2.5 is added from a container 40″

    Act: “differential pressure is applied to accelerate migration of the free hapten across a semipermeable membrane 35 into a second chamber 24 of the cleaning column”

    Act: “The hapten is drained in solution into a reservoir 36, for disposal or subsequent recovery and testing.”

    Act: “The free antibody solution is then returned to a pH of 7.4 by the addition of phosphate buffer saline from container 41.”

    Act: “The free antibody is then ready to be returned to the second chamber 32 of the column 25.”

    To say that the “court must then look to the specification and identify the
    corresponding structure for that function” (emphasis “structure” shows only that these judges do not understand 35 USC 112(6).

  13. “one of the few justices on the CAFC”

    Considering there are no justices on the CAFC, yes, she is one of the few. I wish the CAFC judges were justices though – we’d get less slop like KSR.

  14. MM wrote “Too bad we didn’t get a Newman dissent. I predict this thread winds down before 100 comments.”

    Given that Newman is one of the few justices on the CAFC that seems to have a thorough understanding of patent law, I would have been surprised if she dissented.

  15. Michael Slonecker wrote “KSR’s “common sense” reference allows an examiner to reject a claim under 103 based upon what is inherently within the knowledge of a PHOSITATWSSSP.

    KSR’s “common sense” reference allows an examiner to reject a claim reciting in part a means plus function limitation without corresponding structure described in a specification under 112 even if the limitation is within the knowledge of a PHOSITATWSSSP.

    In other words, “common sense” is a factor under 103, but it is not necessarily a factor under 112.”

    The fact is that using means plus function limitations require by definition including some sort of corresponding structure in the application. The Applicant used a purely functional description in the application.

    Means plus function limitations are supposed to be limited to equivalents of the recited structure(s) in the description. If not one specific structure is cited, then either all differential pressure or valve means would be equivalent or none would be.

    All it would have taken was a single sentence by the Applicant that included some exemplary structures, or even altering the existing sentence like so – “…by known differential pressure, valving and control equipment, such as, for example, …..” and then simply listing a few differential pressure or valve means.

  16. “This Biomedino case is one with extremely bad facts. Bad facts tend to make bad law.”

    The CAFC bucked the trend here. Too bad we didn’t get a Newman dissent. I predict this thread winds down before 100 comments.

  17. This Biomedino case is one with extremely bad facts. Bad facts tend to make bad law. Pay attention to the fact that there is absolutely no description of the box labeled “control” as shown in Fig. 6, not even a reference number. Had they said box 6X is an electronic control unit, that would have been “structure” (to some extent). But they said absolutely nothing about the box in the drawing. They talked only about a method of control –in just one sentence. Obviously they saved on patent preparation costs by saying as little as possible. Penny wise and pound foolish.

  18. There is no difficulty in understanding the meaning of 35 USC 112(6).

    If you use “means” language, you have to disclose the corresponding structure in the written description. Contrary to what many people think, merely putting in a black box is NOT sufficient, as the Amtel case cited in the present decision made clear some time ago. It is also necessary to include equivalents to the disclosed structure of those equivalents are to be clearly covered.

    There may be alternative views. Those holding such views have the task of persuading the Federal Circuit that its decision on these issues is wrong. Prudent draftsmen will avoid this task and follow the giudance handed down by the judges.

    When it comes to identifying the (ab)users of black boxes, those who draft software and business method patents predominate. Such “hand-waving” disclosures will not work against a defendant who knows the law.

  19. Thomason–

    As a first answer to your question above, this is straight from the Anderson opinion: “‘…the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope.’ [quoting Karlin Tech]…’To the extent that the absence of such difference in meaning and scope would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant.’ [quoting Tandon]”

  20. “How too can “circuit means” be enabling but valve “control means” be beyond the ken of a phosita?”

    I thought the issue was indefiniteness, not enablement.

  21. Prof. Crouch, when the issue is legal, e.g., claim construction, not evidential, e.g. infringment, then what does it mean to employ a “presumption.”
    How too can “circuit means” be enabling but valve “control means” be beyond the ken of a phosita?

  22. Although there is a presumption of claim differentiation, in Andersen Corp. v. Fiber Composites, the CAFC found that the weight of the evidence overcame the presumption. In that case, the court also noted that the claim differentiation doctrine is based on “common sense.”

  23. BabelBoy wrote, “My understanding is that a parent claim must be interpreted more broadly than its dependent to avoid redundancy.”

    At least in one case, the Federal Circuit has opined that claim differentiation did not apply to a means-plus-function element — but I don’t have the case cite handy.

  24. I think that using this case to undercut the Supremes KSR decision is a bit of stretch.

    When a prosecutor invokes the “means plus function” paradigm, he/she is saying, “Hey, I’m taking advantage of this easy way to write claims that has been provided for me by 35 U.S.C. 112, paragraph 6. In exchange for that, I agree to follow the rules which include identifying the corresponding structure in the specification.”

    In contrast, Section 103 is never invoked by applicants. It’s invoked by Examiners and other acting in the public interest to prevent obvious patents from issuing or being enforced. Of course common sense and elementary deduction are allowed to enter into such deliberations. Everyone is aware of the sorts of patents that issue when common sense is ignored.

  25. Maybe someone can help me with a couple M+F questions.

    My understanding is that a parent claim must be interpreted more broadly than its dependent to avoid redundancy. Dow V US, 226 F3d 1334 (CAFC, 2000) cited in AWH.

    And so if a parent claim is a M+F and anon-M+F child differs only in that it cites structure for the means, (. . .”wherein said means is a swizzle stick.”)the parent must be interpreted as claiming even broader structure, otherwise the two claims claim the same thing. I thought this was a fairly useful strategy to get the most out of M+F because the “equivalents” of the parent would be equivalents of the broader structure.

    Q1: Assuming there is antecedent disclosure of the swivel stick claimed by the child, does Biomedino mean that in such a case the spec must also disclose structure broader than swivel stick in order to support the M+F parent?

    Q2: If the parent M+F claim takes a Biomedino hit and is invalidated on the grounds of insufficient antecedent disclosure for structure, is the non-M+F dependent claim that claims structure for the means invalidated, too?

    The growing sentiment seems to be we need to take the “+” out of “M+F claim”.

    BabelBoy

  26. Reduced to its essence, I believe the “take away” from this case is as follows:

    KSR’s “common sense” reference allows an examiner to reject a claim under 103 based upon what is inherently within the knowledge of a PHOSITATWSSSP.

    KSR’s “common sense” reference allows an examiner to reject a claim reciting in part a means plus function limitation without corresponding structure described in a specification under 112 even if the limitation is within the knowledge of a PHOSITATWSSSP.

    In other words, “common sense” is a factor under 103, but it is not necessarily a factor under 112.

    Posit a claim reciting “removeable fastening means” for abutting and securing two pieces of wood to one another, and then saying in the specification that such means can be found at any hardware store. The “common sense” reference says an examiner does not need to cite a specific written reference for this claim element under 103 because it is, well, common sense that screws and nails (among others) can be used for this purpose as any PHOSITATWSSSP would readily know. At the same time an examiner can assert non-enablement even though a PHOSITATWSSSP would readily know what is intended if the specification fails to mention things like screws, nails, and the like.

    Yes, I think I now understand the distinction.

  27. I believe that the “danger” of means plus function is a bit overstated here.

    First, the courts decision applied only to those claims dependent on the unsupported structure. Thus, only some means plus function claims (13-17 & 40) were determined to be invalid, not the patent. (Although, I have not investigated the status of the other claims.) The result of the decision is, therefore, no worse than if these means plus function claims had been left out completely.

    Second, the real problem appears to be the balance between means plus function and other types of claims. In this patent, filed in 1991, all the claims include limitations in “means for” form. The take home message should be that the patent we file today may face an entirely different legal landscape 16 years later. Perhaps there won’t be any DOE coverage in 16 year. I like to spread my money around a bit, and suggest that one or two occurrences of “means for” in a set of 20+ claims is good insurance.

  28. While the value of means-plus-function claims is in a valley, such claims still do have a place in certain patents — this is especially true in light of the parallel restrictions on the scope of DOE coverage.

  29. IMO, means plus function claims are still valuable. They are hard to dispose of at summary judgment because they are difficult to construe.

  30. “Just smite them from your claiming vocabulary entirely”

    Good riddance!

    Kudos to the CAFC for following the letter of the law here. Prosecutors get paid big bucks for a reason.

  31. For the first eight years of my practice, I always included a means-plus-function claim in an application (if invention was amenable to its use); for the past eight years, I almost never have. More dangerous then they’re worth.

  32. Prior to this decision, I would have said one of the few acceptable uses of means plus function claims was to claim entirely conventional technology away from the “point of novelty.” Now that may be a hazardous proposition as well. Just smite them from your claiming vocabulary entirely.

  33. Agree %100 with you wicked. The trap that this applicant fell into is in not including sufficient structure. The court stated:

    >The only references in the specification to the “control means” are a box labeled “Control” in Figure 6 and a statement that the regeneration process of the invention “may be controlled automatically by known differential pressure, valving and control equipment.” ’502 patent col.11 ll.55-58.

    I would have guessed that this would be sufficient structure. I have long felt that the uncertainties raised by the court’s asinine rules for interpreting 112 ¶6 makes their usefulness far outweighed by the attached risks, the present case being but one example of such risk.

    Clearly, we need a legislative fix.

  34. So if the applicant had left out the “means,” patent valid (assuming the control truly was conventional).

    Another reason not to invoke 112 6 – it forces you to describe conventional aspects of your invention.

Comments are closed.