Let me Repeat: Means-Plus-Function Element Found Indefinite Without Corresponding Structure

Maurice Mitchell Innovations v. Intel (Fed. Cir. 2007) (non-precedential)

Mitchell’s patent is invalid as indefinite. In its opinion, the CAFC used a simple three step analysis:

  1. The claimed “means for causing” is a means plus function limitation.
  2. The specification contains no structure linked to the claimed means.
  3. Therefore, the claim is invalid as indefinite under 35 U.S.C. 112 p2.

The patentee pointed to a structure in the specification that could serve as the claimed “causing means.” That approach failed because the structure must be “linked” within the specification to the claim language.

Quid pro quo: The CAFC noted that a patentee creates additional burdens by using means plus function language:

“The quid pro quo for using a means-plus-function limitation requires specificity in reciting structure and linking that structure to the limitation.”

In recent history, a more accurate version of this quid pro quo may be written as follows: The quid pro quo for using a means-plus-function limitation is that the patent claims will either be found invalid or narrowly construed.

The CAFC had no reason to issue this as a precedential opinion because it almost identically follows the recent Biomedino case: Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).

The CAFC’s recent decision in Maurice Mitchell Innovations v. Intel provides an interesting example of the level of anxiety and uncertainty that major technology companies continue to feel during patent litigation. Despite the seeming clear and simple issue, Intel hired Robert Van Nest of Keker Van Nest to handle the appeal. (Van Nest is one of the most expensive in the business).

17 thoughts on “Let me Repeat: Means-Plus-Function Element Found Indefinite Without Corresponding Structure

  1. “Hal Wegner suggests that we never use means claims for these reasons.”

    Certainly they shouldn’t be relied on for “important” inventions. Same with product-by-process claims. Those who rely on these “shortcuts” are driving on bald tires across thin ice.

  2. The foregoing comments clearly show how the CAFC continues to screw up patent law. Now when one claims an “amplifier means” a specific amplifier must be disclosed, or “means connecting X and Y” requires disclosure of a conductive wire I guess. Hal Wegner suggests that we never use means claims for these reasons. So I guess we can expect the Court to graft onto the statute whatever they want, and we have to live with it? Why is not our national association screaming about this kind of decisional crap? Jim

  3. Tom
    Yes, that is an excellent point, and, I believe, a widely accepted one. But I guess I’m saying we need to question it.

    I know of no USC, CFR, or MPEP prohibition against using “means for” in the spec. And if there is no such prohibition, and if it provides a clear, irrefutable “link” as required by CAFC, and if it gives me X claims for the price of one, then I’m going to use it, particularly in the 5/25 world we all now operate in.

    I’ve only been in this game for 10 years, and I keep tripping over these unwritten rules of practice that I can never pin down as far as a source. Meta-rules, I guess one could call them. Some are dicta from Landis or other authorities, some just seem to appear out of the fog.

    But if anyone out there knows of a written, formal rule against using “means for” in the spec., please don’t leave me in this delusional state of mind any longer. I mean when I search the description/specification field in the issued patents database for “means for,” there are apparently so many hits that the system burps up a “results truncated” flag. Same for the title field. Google Patents will give you as many titles with “means for” as you care to see. So, I don’t think using “means for” in the spec is per se verbotten.

    Babel Boy

  4. BabelBoy, I don’t like using the term “means” in the spec. It is term of art and should be restricted to the claims. I prefer to identify the functions. In your example, I think it better to say: “The function of dipping, in one embodiment, is performed by . . .”

  5. Jevon — There are several dozen cases examining when certain claim language might or might not be considered ‘means plus function’ language. Although not conclusive, the most compelling evidence of means plus function construction is use of the magic language. In the case discussed above, that language was a “means for controlling.” If the magic “means for” language is used, then the element is presumably a means plus function limitation. On the flip-side, if the magic “means for” language is not used, then the element is presumptively not a means plus function limitation. Note, however, neither of these presumptions are conclusive. The second level analysis looks to whether the claim language recites any structure. If structure is recited then the element is not a means plus function limitation.

    Your example – “feature X adapated to perform Y” – is presumptively not means plus function because it does not use the magic language. If “X” is some structure – such as a computer or processor or circuit – then the language will not be considered means plus function.

  6. Does the following qualify as a means plus function claim:

    The device according to claim 1, wherein the feature X is adapted to perform Y.

    It is my understanding that in Europe, the word adapted is sufficient to indicate some technical meaning to the claim such that it is allowed. Is it the same in the US or is this considered a means plus function claim?

  7. It’s odd that one doesn’t see the words “means for” explicitly used in specs much. What clearer link could there be? Why not just say, “One means for dipping the doo-dad is a rotatable arm as in FIG 1 … a second means for dipping the doo-dad is a vertical spring as in FIG 2 … a third means for dipping the doo-dad is your kid brother hung by his toes as shown in FIG 3.”

    There’s your structure and your explicit link. How easy can it get?

    For the price of one MPF claim saying “…means for dipping a doo-dad” you get all three claims. You’re gonna’ need the MPF leverage under the 5/25 regime. My bet is that they will become very popular again, and lawyers will learn how to use them.

    Babel Boy

  8. There’s a big difference between “clear” linking and “explicit” linking. “Clear” can be discernable, but implicit, while “explicit” requires actual text linking it. Are there any precedential cases that require “explicit” linking?

    I disagree with the “explicit” linking requirement because it’s not necessary or mandated by the statute. However, persons seeking to avoid infringement should not have to guess what the corresponding structure is and, to that extent, this case reaches the right result.

  9. I was the counsel for the client that got “screwed” in the MIDCO case. Judge Clevenger decided some years ago that Congress’ enactment of 112/6 is not to his liking. The specific linking requirement that he engrafted onto 112/6 after we had been drafting means-plus-function claims for many years in a sensible way is a reflection of the Fed Cir penchant for writng law, not applying it.

  10. Nothing new here, really. The appellee in Medical Instrumentation and Diagnostics v. Elekta AB, 344 F.3d 1205, was screwed out of a $25 million verdict, for essentially the same reason, back in 2003. Retroactive application of an “explicit linking” requirement…

  11. “How did it get up to the CAFC: Contingency case is my guess.”

    Or possibly a desperate patentee or trial counsel.

  12. Spend some time reading this patent and you will see how messed up and confusing it is.

    How did it get up to the CAFC: Contingency case is my guess.

  13. “The patentee pointed to a structure in the specification that could serve as the claimed “causing means.” That approach failed because the structure must be “linked” within the specification to the claim language.”

    So the problem was that the patentee was not explicit in “linking”
    the structure with the “causing means”. i.e. in the written
    description he should he have said “this structure provides a causing
    means”?

    Still seems a little fishy to me. I don’t have time to
    read more on this case but in general, if the written description
    enables the claims the patentee should be good to go.
    Apparently there was some confusion.

  14. While we’re on Section 112, has Dennis, with his wonderful knack for helpful stats, or anyone else ever calculated how many gallons of ink are wasted every year by judges, litigants, commentators, etc. having to write “first paragraph” and “second paragraph?”

    Why on earth didn’t the bimbo who drafted 112 use the customary (a) and (b)? They certainly didn’t spare the alphabet when it came to 102.

    Babel Boy

  15. “…is that indefinite?”

    Probably not. See MPEP 2163 and 2181

    2163:
    A means- (or step-) plus-function claim limitation is adequately described under 35 U.S.C. 112, para. 1, if: (1) The written description adequately links or associates adequately described particular structure, material, or acts to the function recited in a means- (or step-) plus-function claim limitation; or (2) it is clear based on the facts of the application that one skilled in the art would have known what structure, material, or acts perform the function recited in a means- (or step-) plus-function limitation.

    2181:
    37 CFR 1.75(d)(1) provides, in part, that “the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” In the situation in which the written description only implicitly or inherently sets forth the structure, materials, or acts corresponding to a means- (or step-) plus-function, and the examiner concludes that one skilled in the art would recognize what structure, materials, or acts perform the function recited in a means- (or step-) plus-function, the examiner should either: (A) have the applicant clarify the record by amending the written description such that it expressly recites what structure, materials, or acts perform the function recited in the claim element; or (B) state on the record what structure, materials, or acts perform the function recited in the means- (or step-) plus-function limitation. Even if the disclosure implicitly sets forth the structure, materials, or acts corresponding to a means- (or step-) plus-function claim element in compliance with 35 U.S.C. 112, first and second paragraphs, the USPTO may still require the applicant to amend the specification pursuant to 37 CFR 1.75(d) and MPEP § 608.01(o) to explicitly state, with reference to the terms and phrases of the claim element, what structure, materials, or acts perform the function recited in the claim element.

  16. So if a spec has “a delay circuit” and the claim later refers to “means for delaying” which isn’t expressly in the spec but you know what they mean, is that indefinite?

Comments are closed.