Means-Plus-Function Claims: Defining the Scope of the Corresponding Structure

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd. (Fed. Cir. 2010)

A five-judge Federal Circuit panel has narrowed the district court’s construction of the patentee’s means-plus-function claim limitations. This decision might be seen as the foil to the Federal Circuit’s recent broad interpretation of a means-plus-function element in Hearing Components v. Shure. Interestingly, Judges Lourie and Rader signed both opinions.

The Pressure Products patent covers a mechanism for inserting and removing catheters and pacemaker leads. The asserted claims include a “means for” facilitating the removal of both a hemostatic valve and a sheath from the disposed catheter. The parties agreed that this limitation should be interpreted as a means-plus-function limitation, but disagreed as to the proper scope of the limitation. Under 35 USC 112p6, a means-plus-function limitation is construed to “cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” The district court judge held that the corresponding structure described in the specification used a “score line” to allow the hemostatic valve to separate. During trial (after the close of the plaintiffs case) the Judge updated its definition to include a “linear perforation; slit; slot; tab; line; severing; weakening; or tear that can be partial or complete.” The jury found infringement and awarded $1.1 million in past damages.

On appeal, the Federal Circuit reversed.

Claim Construction During Trial: The Federal Circuit first looked at the lower court’s procedure and held that the timing of claim construction is in the discretion of the lower court so long as the court works to avoid “surprise and prejudice” that could accompany a late change to the construction.

While recognizing the potential for surprise and prejudice in a late adjustment to the meaning of claim terms, this court also acknowledges that the trial court is in the best position to prevent gamesmanship and unfair advantage during trial. Moreover, this court understands that a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates.

 

Scope of the Corresponding Structure: The “score line” structure was discussed in the specification and was clearly a “corresponding structure” to the means-for element. At dispute, however, was the scope of the structure disclosed. Namely, the patent specification included a “laundry list” of prior art references and the district court used the disclosures from those references to expand the definition of a “score line” beyond the structure that was literally described in the specification. On appeal, the Federal Circuit held that approach was wrong and that “the trial court impermissibly expanded the corresponding structure of claim 1 to include structures not described in the specification.”

Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. . . . Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6—a question of fact for the jury—these alternative methods . . . cannot be treated as the disclosed structures for the removal means. Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.

“This court remands for further proceedings in light of the proper construction of the term ‘score lines.’”

Writing in Dissent, Judge Newman argued that the patentee should have been allowed to rely upon the disclosures discussed in the specification in order to identify the scope of the disclosed corresponding structure.

Inequitable Conduct: This case also includes an important procedural decision on inequitable conduct – affirming the district court’s refusal to allow the defendant to amend its answer to include an inequitable conduct defense.

77 thoughts on “Means-Plus-Function Claims: Defining the Scope of the Corresponding Structure

  1. Ned it does say combinations implying that single means claims are not included in the savings clause. But, as I said, this in turn suggests that adding fluff limitations cannot turn what is effectively a single means clause into a true combination.

    Agreed.

  2. True, and it also doesn’t say why single means claims are not included since the vice of covering all ways of accomplishing the specific result is eliminated if such claims were covered by the statute.

    And, it doesn’t say that MPF equivalents apply only to known equivalents.

    And, it doesn’t say, “regardless of p.2″ the clause shall apply, or that this clause should apply in the PTO.

    A lot of that has come from case law.

    But, it does say combinations implying that single means claims are not included in the savings clause. But, as I said, this in turn suggests that adding fluff limitations cannot turn what is effectively a single means clause into a true combination.

  3. Otherwise the requirement for combinations in the statute make no sense whatsoever.

    I’m not sure it makes sense either way. But it doesn’t say “novel combinations” or “combination inventions” or “where the novelty resides in the combination” or any such thing. All it appears to require is a device comprising first means for functioning and second whatever.

  4. IANAE, I am somewhat sure that the Supreme Court in Halliburton and the drafter of the Statute, Rich, had novel combinations in mind when drafting Section 112, p. 6. Otherwise the requirement for combinations in the statute make no sense whatsoever.

  5. Section 112, p. 6 also authorizes MPF claim elements as part of combination claims and imposes on them a rule of construction. It says nothing at all about MPF claim elements that are NOT part of a claim for a combination. Here, the construction clause is NOT imposed by statute and the claim clearly covers all means for achieving the specified result and directly violates Halliburton.

    Is there an accepted definition of “claim for a combination” for these purposes? Presumably it would be any claim that recites at least two things.

    I guess we can consider it an amusing quirk of statute that adding a second, trivial means to a structure-free single-means claim saves it under 112 6th. I can’t think of any reason why it should, other than because that’s what the statute says.

    What if the single means is itself necessarily a combination? I can’t think of an example, but I’m sure one must exist.

  6. Max, moreover, once we establish that single means claims are not saved by Section 112, p. 6, we can go to the next step where everything in the claim is old and old in combination. The functionally defined element is old. The only thing new is the structure in the specification.

    Such a claim is both indefinite and a violation of Halliburton. It is not truly a combination claim, but a functionally defined invention in its entirety. Such are not allowed under section 112, p. 6. Neither are they allowed under many many many US Supreme Court cases including Halliburton.

  7. MaxDrei, has been standard US law for a very long time that single means claims are forbidden on the grounds that such a claim attempts to claim all ways of achieving a specified result.

    Section 112, p. 6 also authorizes MPF claim elements as part of combination claims and imposes on them a rule of construction. It says nothing at all about MPF claim elements that are NOT part of a claim for a combination. Here, the construction clause is NOT imposed by statute and the claim clearly covers all means for achieving the specified result and directly violates Halliburton.

  8. I imagine you are in favour of silence, for those who have nothing useful to add to the discussion?

    No way Maxie, I am all for good debate and lots of colors in the rainbow. Besides, I would be ever so bored in I didn’t have you to have fun with.

  9. …because, ping, the instant “position” here under discussion is a little bit “special” (to say the least), is peculiar to the USA, outside my direct personal experience and totally beyond my comprehension.

    So, unlike with issues generally, with this specific issue I thought that I couldn’t add anything further that would be useful for readers.

    I imagine you are in favour of silence, for those who have nothing useful to add to the discussion?

  10. Sorry but I lack the qualifications to opine about the position in the USA.

    Maxie, this has never stopped you before, why let it get in the way now?

  11. No one has answered my question, if the claim covers the corresponding structure, materials and acts, why are single means and single step method claims using MPF forbidden?

    I missed this question the first time around, Ned. It’s a good one. Where does it say that single means claims are forbidden?

  12. No one has answered my question, if the claim covers the corresponding structure, materials and acts, why are single means and single step method claims using MPF forbidden?

    There seems no clear or understandable answer to this question for anyone who believes in the gospel according to Donaldson.

  13. Max, good for Europe.

    IANAE, so, you say, I disclose both a zipper and velcro and claim means for resealing the envelope. The prior art shows velcro. I respond by disclaiming velcro, but do not amend the claim.

    Is there anything at all wrong with this?

  14. Ned, to duck out of an answer to your question, the prior art VELCO seal destroys the novelty of the “re-sealable” claim in my jurisdiction. One would have to narrow to a zipper seal.

    A debate about what other seals are “equivalent” to a zipper is something that might occur in the USA but not anywhere else. Such a debate is outside my experience.

    Sorry but I lack the qualifications to opine about the position in the USA.

  15. Now, if the spec says, resealable means zipper, why shouldn’t we require that to be put into the claim during examination?

    1. Because autolexicography in the spec is just as binding as the claim language.

    2. Because it’s already in the claims. The word “zipper” is spelled “m-e-a-n-s”.

  16. Max, Suppose the prior art also had resealable flap envelopes: let’s say, velcro pads. The description in the patent discloses instead a zipper-like structure.

    Now reconsider, is the claim definite?

    Is it made more definite if the specification says “One way of accomplishing the function is a zipper. Other ways of accomplishing the function are within the scope of the invention.”

    Now, if the spec says, resealable means zipper, why shouldn’t we require that to be put into the claim during examination?

  17. The problem arises when the corresponding structure is the invention, particularly when the corresponding structure is argued for patentabliity.

    If you explicitly recited the corresponding structure, you’d have no problem. Right?

    Why should it make a difference whether your claim explicitly recites the corresponding structure or whether your claim recites magic words that according to the statute must be construed to mean the corresponding structure?

  18. Malcolm, I think not. Similarly, if you said, “means for sealing” had an expressed definition in the specification, the claim would be definite.

    But, if the claim itself must define over the art, and if it must define a new combination, it matters not whether the elements of the new combination are new or old. It would be safe to say, under these circumstances, that the scope of equivalents should be generous: all known ways of accomplishing the same result should be deemed an equivalent. In the PTO, BRI would assume that if the prior art could perform the function, it is an equivalent.

    The problem arises when the corresponding structure is the invention, particularly when the corresponding structure is argued for patentabliity. Here, there should be no broad automatic equivalents, but the general rule of the DOE should apply: the accused device should perform the claimed function in substantially the same way as the corresponding structure — insubstantial differences.

    Clearly, from the recent cases posted on this blog, the Federal Circuit does not know how to distinguish between the two cases. They clearly have lost their way since overruling In re Lundberg.

  19. I like Malcolm’s hypo. I would like it even more if it recited:

    “An envelope with a re-sealable flap.”

    because in EPO 2-part form it would read something like:

    “An envelope with a sealable flap, characterized in that:
    the flap is re-sealable.”

    which is 100% functional at the point of novelty, but defines a clear, new, non-obvious, enabled, sufficiently described, neat, meritorious invention. Why on earth should it be declared invalid?

  20. Malcolm, your example “re-sealable flap” includes structure, a flap is a well known element recognized as having structure.

    What isn’t a well known structural element is “a system configuratior configured to generate a random system configuration file.” The specification does not enable each and every “configurator configured to generate a random system configuration file” so the claim is beyond the scope of enablement found in the specification and fails 112 1st paragraph.

    C’mon Malcolm, this is how the software claims are invalid. I thought you’d like this.

  21. Ned

    what is clear is that claim itself has to define a new combination, i.e., it has to define over the art without reference to the specification.

    I don’t think the principle can be pushed beyond the “means” language (i.e., claim language which recites no structure whatsoever).

    After all, a patentee can be his/her own lexicographer. Is the following claim invalid: “A box with a re-sealable flap”

    It would seem so. Would Lundberg preclude me from pointing to the specification where I have expressly defined “re-sealable flap” to refer to something unquestionably novel?

  22. But what is clear is that claim itself has to define a new combination, i.e., it has to define over the art without reference to the specification.

    You can’t read a claim without reference to the specification. That doesn’t even make sense.

  23. Claim as a whole? Doesn’t that relate to obviousness? Doesn’t Section 103 under Graham V. John Deere also require us to IDENTIFY the differences between the claim and the prior art?

    When we are talking novelty, we do have a Supreme Court case that says that a claim that is functional at the point of novelty is indefinite. The Supremes clearly believed that the new subject matter disclosed in the patent before them was the mechanical tuner and nothing else. They did not believe, it appears, that the claim was directed to a new combination where the functional elements were directed to old apparatus.

    The question on the table here is whether this case is in some way overruled?

    Note, the rule of construction (in court) of functional elements of new combinations was the functional elements covered the corresponding structure and equivalents. The statued did nothing new here.

    We a case in evidence: In re Lundberg. This case held that the combination itself had to define over the art and that one could not reference the corresponding structure for novelty purposes. What is this but the actual holding in Halliburton, but from a patentability-point-of-view? Had the claim before them recited a new combination of old elements (albeit, functionally claimed) the Supremes would have had no problem with the claim.

    Even if the corresponding structure of one of the elements was new, the Supremes still may not have had a problem with the claim. But that was the open question that caused the bar such concern and is the reason for Section 112, p. 6.

    If you understand the concern, you can begin to understand the statute. But what is clear is that claim itself has to define a new combination, i.e., it has to define over the art without reference to the specification. That was the intent at the time and that was the holding in Lundberg.

    But then, along came Donaldson.

    The Feds really have to review this decision.

  24. What, if anything is the problem with this claim?

    I’m not seeing a 112 problem. All I see is “a preamble, comprising: corresponding structure for performing the invention”.

    Could I get another hint please?

  25. IANAE and Ping,

    Let’s try this, step by step.

    The claim read, Preample or Jepson listing background, comprising: means for performing the invention.

    Assume corresponding structure is described and is novel.

    What, if anything is the problem with this claim?

  26. “Halliburton simply is not good law anymore, no matter how many times you seek to resurrect it.”

    Halliburton is good law when the specification does not provide a structure corresponding to the functional element. In that case, under Halliburton, claiming the function by itself its outside the scope of enablement.

    This is true even if the functional “structure” is not written as means plus function. In other words, claiming “a widgetor that widgets a first signal with a second signal” is invalid under Halliburton

    I never understood why people think means plus function claims are a waste of time, but the invalid “widgetor that widgets” claims are a good idea

  27. The vice Halliburton was concerned with is the latter, where novelty was in the one element, but not in the function, but in the corresponding structure.

    Means-plus-function claims don’t claim function. They claim structure. Halliburton does not apply.

    Why is this so complicated? It’s right there in the statute.

  28. ‘The specification discloses a gonklet for reversibly joining A and B.’

    112 6th is just shorthand. You don’t need 112 6th for this case, but when there are multiple means for joining, then mpf claiming does serve a purpose.

  29. Yes, by all means let’s once again look to old law.

    Gee, I didn’t see that coming.

    I suppose Ned that you think the separating wheat from chaff comment is meant that you don’t have to look at claims as a whole? I love the whole IMHO-Law-of-Ned thing you got going there. Must be nice to set the rules of your own legal universe. Say “Hi” to Sarah and Michael for me.

  30. ping, the Supreme Court has no problems filtering the wheat from the chaff. Look at contributory infringement and Quanta for example.

    As I have explained, and I hope carefully, if a MPF claim element is part of a novel combination, it could matter less if the corresponding structure was new or old. If, however, the combination is old, it matters a great deal that the corresponding structure is new.

    The vice Halliburton was concerned with is the latter, where novelty was in the one element, but not in the function, but in the corresponding structure.

    How in the world is this holding affected in any way by Section 112, p.6? The bar recommended the statute because of its fear that MPF claiming was banned. But it was not. That is not what the Supremes had in mind. They even held valid a MPF claim in a later case before the ’52 act.

    But note the features of Sect. 112. p. 6. It not only has the construction clause feature, it also requires the functional element be claimed in a claim to a combination.

    Now, what does that mean?

    We have to look to Halliburton to understand what that means.

  31. When the novelty is NOT in the combination, but in the one element functionally claimed, we have the very vice found unlawful by Halliburton.

    Ned, two things I ha_te to bug you about:

    1) Halliburton simply is not good law anymore, no matter how many times you seek to resurrect it.

    2) novelty, as in the other patentability requirements are judged on the claim as a whole – not on elements of a claim.

    So you apply bad law incorrectly to get to your position. I do not thinka double negative inthis case yields a positive.

  32. There is nothing “specific” or “limited” about a statute that refers to “equivalents.”

    Well, everything gets equivalents unless you dig through the file wrapper and find a reason why it doesn’t. I don’t consider equivalents to be a distinguishing feature between means-plus-function and ordinary structural claims. As far as literal meaning (non-equivalents) is concerned, means-plus-function is more limited in its scope than broad structural terms.

    Why negate the plain meaning of the words?

    Because it’s the law. Just like all the other law that tells us when to negate the plain meaning of the words, or what fictitious expert witness is qualified to opine on what the plain meaning of the words really is.

    The claim has no scope at all until it is construed according to the law. Even if it happens to be made of words that individually mean things.

  33. Mooney, we agree on this.

    Note, Section 112, p. 6 only authorizes the use of functional claim as elements of combination claims. When the novelty is NOT in the combination, but in the one element functionally claimed, we have the very vice found unlawful by Halliburton. There is no clear authorization of functionally claiming an invention in Section 112, p. 6.

  34. Mooney, mmmmmyeaah, I’m gonna have to ask you to, go ahead and move your office down to Storage B. Ya see we’ve got some new people coming in. And, mmmmmmyeah, I’m gonna have to get that gonklet from you.

  35. Re Lundberg: That case held that a claim that literally read on the prior art was invalid and could not be saved by reference to the corresponding structure, otherwise the claims would violated the mandate of Section 112, p. 2.

    This makes sense to me. Imagine you have a claim “A combination of A and B, comprising a means for reversibly joining A and B.”

    The prior art discloses a combination of A and B, comprising a squibbink for reversibly joining A and B.

    The specification discloses a gonklet for reversibly joining A and B.

    How is the patent system served by allowing the means-plus-fxn claim? It’s absurd. The claim must be amended to recite a gonklet as the claim is literally anticipated. Why negate the plain meaning of the words?

    Means plus fxn claiming is simply a broken paradigm. It’s even worse than product-by-process claiming was until the Fed Cir cleaned that up recently.

  36. IANAE 112 6th turns overly-broad functional claim language into clear, specific, limited structure.

    There is nothing “specific” or “limited” about a statute that refers to “equivalents.”

  37. Halliburton remains good law, IMHO. If the novelty is not in the combination, but in the one element functionally claimed, it violates Section 112, p. 2,

    I agree with the principle that claiming function at the point of invention is a problem. However, 112 6th forces you to construe functional language as described structure. In effect, if there is described structure in the spec the claim is not functional, and if there is no described structure in the spec the claim fails under 112 2nd with or without 112 6th.

  38. Halliburton remains good law, IMHO. If the novelty is not in the combination, but in the one element functionally claimed, it violates Section 112, p. 2, just as stated by the Supremes (RS 4888 is the analog of Section 112, p. 2).

  39. IANAE – you are 100% correct again. Ned has resurrected Halliburton and doesn’t understand why there are so many problems with Halliburton. People have just got to learn to listen to you.

  40. IANAE, read Halliburton one more time.

    Halliburton is not the problem with means-plus-function claims under 112 6th. Halliburton is the problem with means-plus-function claims that 112 6th fixes.

    112 6th turns overly-broad functional claim language into clear, specific, limited structure. That’s exactly what you want at the point of novelty.

  41. IANAE, read Halliburton one more time. I will quote extensively to illustrate the vice:

    “Under these circumstances, the broadness, ambiguity, and overhanging threat of the functional claim of Walker become apparent. What he claimed in the court below, and what he claims here, is that his patent bars anyone from using in an oil well any device heretofore or hereafter invented which combined with the Lehr and Wyatt machine performs the function of clearly and distinctly catching and recording echoes from tubing joints with regularity. Just how many different devices there are of various kinds and characters which would serve to emphasize these echoes we do not know. The Halliburton device, alleged to infringe, employs an electric filter for this purpose. In this age of technological development, there may be many other devices beyond our present information — or, indeed, our imagination — which will perform that function and yet fit these claims. And, unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose. See United Carbon Co. v. Binney & Smith Co., 317 U. S. 228, 317 U. S. 236; 68 U. S. 568; 56 U. S. 112-113. Yet, if Walker’s blanket claims be valid, no device to clarify echo waves, now known or hereafter invented, whether the device be an actual equivalent of Walker’s ingredient or not, could be used in a combination such as this, during the life of Walker’s patent.

    Had Walker accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could accent waves. For, had he accurately described the resonator together with the Lehr and Wyatt apparatus, and sued for infringement, charging the use of something else used in combination to accent the waves, the alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was not known at the date of Walker’s patent as a proper substitute for the resonator; or (3) had been actually invented after the date of the patent. Fuller v. Yentzer, supra, at 94 U. S. 296-297; Gill v. Wells, supra, at 89 U. S. 29. Certainly, if we are to be consistent with Rev.Stat. § 4888, a patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”

  42. I agree with IANAE. 112 p6 merely requires that the public reference the spec in a defined way when reading mpf claims. I don’t believe there is any conflict with 112 2nd.

    I’m particularly skeptical that there is a constitutional problem. We used to have omnibus claims.

  43. As I have pointed out, it is possible, indeed easy, to reconcile Section 112, p. 6 and p. 2.

    You’ve demonstrated that it’s possible. You’ve demonstrated that it’s easy. You still haven’t demonstrated that it’s necessary.

    112 2nd says you have to distinctly claim your invention. 112 6th gives means-plus-function claims a distinct meaning that, unlike other claims, is completely limited by the contents of the accompanying spec plus equivalents.

    I ask again: why is it a 112 2nd problem if you have to read the claim in a way that is contrary to the statute for it to read on the prior art?

  44. Regarding the discussion of Amtel, Newman herself says the characterization that “this court refused to utilize the concept of incorporation by reference to include a structure in the prior art as a corresponding structure for a means-plus-function claim element” is incorrect.

    Here is what she says:

    “That is an incorrect generalization. In Atmel, the flaw was that no structure at all was described to perform the claimed function apart from the incorporated reference, and that this description could not come solely from the incorporated reference. See id. at 1382 (“Fulfillment of the §112, ¶6 tradeoff cannot be satisfied when there is a total omission of structure. There must be structure in the specification.”). However, that is far removed from the situation here. The ’904 and ’355 patents fully describe structures that perform the claimed function of removal of the valve and sheath, describing splittable sheaths of various forms, and explaining that there are many known ways of splitting or peeling plastic”.

    This is all very confused and confusing.

  45. Let’s say it might be more logical, but it is not the only possible construction. But, since it places Section 112, p. 6 into conflict with Section 112, p. 2, it cannot be right as there is a reasonable interpretation where the two statutes harmonize.

    The Fed. Cir. certainly had a lot of hubris to overturn the CCPA when they clearly did not have to.

    So, we have a “conflict in circuits” on this issue, so to speak. It really needs to be taken up by the Supreme Court.

  46. Ned, thanks for the detailed response.

    Donaldson did expressly overrule Lundgren.

    “To the extent that In re Lundberg,244 F.2d 543, 113 USPQ 530 (CCPA 1979), In re Arbeit, 206 F.2d 947, 99 <16 F.3d 1194> USPQ 123 (CCPA 1953), or any other precedent of this court suggests or holds to the contrary, it is expressly overruled.”

    IMO, Donaldson appears to be the more logical interpretation of the law. MPF claiming would be silly/useless option under in re Lundberg’s holding. But I understand your position now.

  47. That case held that a claim that literally read on the prior art was invalid and could not be saved by reference to the corresponding structure, otherwise the claims would violated the mandate of Section 112, p. 2.

    Seems reasonable. Is this Lundberg or Dondaldson?

  48. Just visting, kinda yes and kinda no. The precise issue of conflict with Section 112, p. 2 had not been presented in any infringement case that I know of and none was cited in Donaldson. If you know of such a case, please cite it.

    While Donaldson purported not to overrule In re Lundberg, it quite obviously did. That case held that a claim that literally read on the prior art was invalid and could not be saved by reference to the corresponding structure, otherwise the claims would violated the mandate of Section 112, p. 2.

    In re Lundberg was the law until Donaldson, and I bet it was followed by the courts in infringement cases. As I have pointed out, it is possible, indeed easy, to reconcile Section 112, p. 6 and p. 2. One has to assume that all the corresponding structure is old and the novelty lies, if at all, in the combination. That is essentially what In re Lundberg held. This is not inconsistent with the additional requirement in proving infringement that one must prove that not only does the accused device perform the recited function, but that the accused device is also the equivalent of the corresponding structure. There is nothing at all inconsistent here with the further requirement, imposed by Section 112, p. 2, that the claim itself cannot read on the prior art.

  49. “fundamental misunderstanding of MPF clauses introduced into the law since Donaldson”

    In re Donaldson is only about whether the PTO can ignore 112, 6th paragraph during prosecution. The interpretation of mpf claim elements outside the PTO was not in dispute.

  50. Team Newman here. If the applications states “there are other means for X such as those described in these publications,” the structure described in those publications ought to equivalent in general.

  51. So you agree that I can claim a chemical genus as a means for accomplishing the disclosed utility and should be able to distinguish the claim from prior species that achieve the same utility by arguing the advantages of my own species?

    I don’t even understand what you’re talking about, but if you think it runs contrary to 200 years of jurisprudence, I’m inclined to agree with the statement.

  52. Newman … obviously understands the issues and understands them well. In contrast, Radar is a loon, IMHO.

    I know how you feel. The people who agree with me are brilliant and the people who disagree with me are crazy too. Funny how that happens.

    I’m not convinced Newman understands the issues, when she decides that “corresponding structure, material, or acts described in the specification” includes structure not described in the specification. If the specification says “there are a bunch of structures that I haven’t bothered to mention”, that’s the opposite of what 112 6th says the claim covers. Also, Newman seems to have incorrectly thought the prior art was incorporated by reference.

    Also, I can’t find in Newman’s dissent any mention of the various meanings of “literal” that you’ve used here, or their implications for the constitutionality of means-plus-function claims. On the contrary, she says you should first get the claim construction right, and then everything else will work itself out. Maybe I read it too quickly?

  53. Radar is a loon, IMHO. He in incorrigibly dense and really needs to retire or be removed from the bench.

    Wow – I think CaveMan just clutched his pearls so hard they turned into diamonds.

  54. So you agree that I can claim a chemical genus as a means for accomplishing the disclosed utility and should be able to distinguish the claim from prior species that achieve the same utility by arguing the advantages of my own species?

    This would turn 200 years of jurisprudence in this area on its head.

    But this is the practical result of what you just said. But, it also is, it seems, permissible under Donaldson.

  55. IANAE, I read the opinion itself and Newman’s dissent. It is very consistent with the points I have been making here. Newman’s dissent in particular is spot on. She obviously understands the issues and understands them well.

    In contrast, Radar is a loon, IMHO. He in incorrigibly dense and really needs to retire or be removed from the bench.

  56. But the claim still literally reads both on the prior art cures and on all future cures for cancer.

    Of course it does. You haven’t written it in means-plus-function form.

    If you claim “means for curing cancer”, it very obviously reads on only the corresponding means disclosed in the specification, and there’s no issue at all with public notice. Sure, you have to read the spec to know what exactly the claim covers, but you’d have had to do that anyway.

    Whether the claim would read on the prior art in the absence of 112 6th is completely irrelevant. A claim can’t read on anything until the claim is construed, and claim construction has rules.

    For what it’s worth, I agree that means-plus-function claims don’t give very effective public notice to people who don’t know what they mean, but I don’t really see that as a huge problem.

  57. IANAE, agreed on the lack of antecedent basis and with your revision.

    But the claim still literally reads both on the prior art cures and on all future cures for cancer. One cannot tell from the claim itself what was invented. I would argue that such claims are unconstitutional for the reasons previously stated in O’Reilly v. Morse and Halliburton.

    Imagine if we could preserve chemical genus claims that literally read on prior art species by arguing subranges or the advantages of the disclosed species over the prior art species? The problem would be is that one could never know precisely what such claims covered. The claim would essentially cover all ways of accomplishing the disclosed utility, now and in the future, save for any ways that may be known in the prior art.

    Incredible.

    But this is the precise consequence of Donaldson.

    And, this result was completely unnecessary from a statutory point of view. But it has resulted in chaos, uncertainty and, in my view, unconstitutionality.

  58. I’m sorry, IANAE, but isn’t that what happened in this case?

    It’s not, and I accept your apology.

  59. It is quite another to ignore a specific list of alternative ways of accomplishing the same result

    Nad Hallar, can you give an example of a case where Rader or anyone else ignored such a list?

  60. Mooney, I haven’t read Atmel, but I am sure that case involved whether there was corresponding structure or not. It was a Section 112, p.1-2 case.

    Whether there is corresponding structure is one thing. It is quite another to ignore a specific list of alternative ways of accomplishing the same result when the invention has nothing whatsoever to do with the particular way of accomplishing the result. The existence of the list by itself confirms this.

    I must say that central to all bad decisions on MPF is this loon Radar. He, in my humble opinion, is and has been a very bad circuit court judge — at least on MPF. It is too bad that Rich is no longer around to “help him out.”

  61. Lurker: In Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999), this court refused to utilize the concept of incorporation by reference to include a structure in the prior art as a corresponding structure for a means-plus-function claim element.”

    That’s different. In Atmel, the document incorporated by reference was a journal article, not a patent. See Rule 1.57 (c)(3):

    (c) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to: (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by the sixth paragraph of 35 U.S.C. 112.

    The Circuit shouldn’t be stretching the holding in Atmel this far in this case, because nothing has explicitly been incorporated by reference at all.

    Ned: Now, even if this claim could be construed to cover the corresponding cure and equivalents, isn’t there something else wrong with the claim?

    Yes, there is. It lacks antecedent basis.

    Now, if you had instead claimed “means for curing cancer”, you’d be good to go.

    See the difference?

  62. In Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999), this court refused to utilize the concept of incorporation by reference to include a structure in the prior art as a corresponding structure for a means-plus-function claim element.”

    Hmm, wasn’t aware of this case. I correct my earlier comment: best practice is to describe the structures expressly. And I would add a line saying “or any other structure known in the art which achieves the same function,” just for good measure.

    Of course, if the real invention is the “means” itself, then using means-plus-fxn language to describe that “means” in a claim with additional limitations seems m0r0nic.

  63. IANAE, as in the other thread, assume dozens of ways of curing cancer exist. I invent a new one. I claim

    The cure for cancer.

    Now, even if this claim could be construed to cover the corresponding cure and equivalents, isn’t there something else wrong with the claim?

    Anything?

    Even a little bit wrong?

    (Assume here that the claim also has other inconsequential elements, and is structured in MPF languange.)

  64. With reference to IANAE’s 10:54 comment and that of Inviting Body Punches, they are correct that at least the ’904 patent does not say “incorporated by reference herein” in relation to the prior art structure teachings – but the panel opinion is crystal clear that even if the ‘magic words’ had been used, the prior art structures would not have been treated as structure described in the specification per 112, para 6:

    “The Lee patents give a laundry list of prior art references. See ’904 patent col.1 ll.41–61; ’355 patent col.1 ll.45–63. The trial court included the structures disclosed within that list of prior art references as corresponding structures for claim 1 by including them in its definition of “score line.” In doing so, the trial court impermissibly expanded the corresponding structure of claim 1 to include structures not described in the specification.
    Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. In this case, these references provide alternatives to scoring. Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6—a question of fact for the jury—these alternative methods of splitting or peeling cannot be treated as the disclosed structures for the removal means. Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.
    In Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999), this court refused to utilize the concept of incorporation by reference to include a structure in the prior art as a corresponding structure for a means-plus-function claim element.”
    The claims are intended to communicate to those in the art what combinations of elements (old or new individually) are available for use and which are not – only the Fed Cir would read these claims and NOT understand that novel and nonobvious combinations including the prior art structures in these specifically listed references were being claimed.

  65. Ned: But, when one understands that corresponding structure is old, as it was here, one is NOT expanding the scope of the claim by listing alternative structures in the prior art. The list is simply to deter the otherwise anal construction of equivalents by the Fed. Cir. If the art knows dozens of ways of accomplishing the recited function, it is a major vice in the Fed. Circuits legal reasoning to even suggest that one is trying to claim something he or she is not entitled to by listing the alternatives. This is beyond nonsense.

    I agree. Best practice would be to incorporate by reference any prior art references cited as proxies for description of the alternative structures.

  66. If the claim as a whole literally reads on the prior art, the claim should not be saved by arguing that the corresponding structure is new.

    You’re saying that if a legally incorrect claim construction reads on the prior art, the claim should not be saved by applying the legally correct claim construction.

    I don’t know why you think that could ever be the case.

  67. I couldn’t disagree more strongly with this opinion. It clearly and flagrantly misunderstands the role of a means element in a claim.

    FUBAR.

    A means element’s corresponding structure can be entirely old. It often is. Is role is to sum up broadly old structure. It can be used to claim novel structure, but at the risk that some prior structure can perform the claimed function. The novelty of a claim with MPF claim elements lies in the claim as whole.

    Because of the fundamental misunderstanding of MPF clauses introduced into the law since Donaldson, the result here might have been understandable. But it remains wrong.

    Furthermore, I have to state this unmistakably once more. In construing MPF clauses, one has to assume that all the structure is old. If the claim as a whole literally reads on the prior art, the claim should not be saved by arguing that the corresponding structure is new. Otherwise, the claim as a whole fails under Section 112, p. 2. It lacks necessary necessary limitations to distinguish the claimed invention from the prior art. I know this very practice was permitted by Donaldson, but that court was wrong and needs to be reversed in some fashion.

    But, when one understands that corresponding structure is old, as it was here, one is NOT expanding the scope of the claim by listing alternative structures in the prior art. The list is simply to deter the otherwise anal construction of equivalents by the Fed. Cir. If the art knows dozens of ways of accomplishing the recited function, it is a major vice in the Fed. Circuits legal reasoning to even suggest that one is trying to claim something he or she is not entitled to by listing the alternatives. This is beyond nonsense.

  68. It is my impression that references are supplied primarily to aid the examiner, not primarily as material descriptive of the invention.

    I do believe that if one desires the content of the reference to be added to the corpus of the patent application, one should make that incorporation by reference explicit.

  69. Wouldn’t one skilled in the art understand from this that the patentee intended to claim not only the one disclosed structure, but the prior art structures as well in the combination?

    What you intend to claim is secondary to what you actually claim. Once you invoke 112 6th, you only get corresponding structure and equivalents.

    If, as in this case, you don’t actually incorporate the listed patents by reference, they’re not part of your spec and they don’t come into the scope of a means-plus-function limitation.

    I would even go so far as to say that triggering 112 6th is an explicit indication that the applicant did not intend to claim the undisclosed prior art structures.

  70. Per Luke’s comment above, that’s exactly the holding. The patentee described one structural means for accomplishing the function, said the particular manner of accomplishing the function was not critical and there had been many different structures/ways described in the art that could be used – see, for example… Wouldn’t one skilled in the art understand from this that the patentee intended to claim not only the one disclosed structure, but the prior art structures as well in the combination?

  71. was it a “laundry list of prior art references” that had nothing to do with the claimed invention, but was added to the specification just because the attorney had nothing else to write about, or was it a “laundry list of prior art references” that is related to the claimed invention and was added to the specification to describe the “scope and content of the prior art” to help the inventor “particularly point out and distinctly claim” that which the inventor regards as his invention?

  72. I do not think was an “incorporation by reference.” I think it was simply a “laundry list of prior art references,” as stated by the CAFC. I didn’t read the patent or the district court decision to see if it was an *actual* incorporation by reference with the magic words, but the CAFC did not so indicate.

  73. So incorporating something by reference doesn’t actually incorporate it as a reference? Nasty. I predict much discussion on this…

    Cheers, Luke

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