Means-Plus-Function: Invalid as Indefinite

by Dennis Crouch

Ergo Licensing v. CareFusion 303 (Fed. Cir. 2012)

In a split opinion, the Federal Circuit has affirmed a lower court ruling that Ergo's asserted claims are invalid. Judge Moore explains in her opinion, that the claims are indefinite under 35 U.S.C. § 112 (2) because the means-plus-function limitations are not supported by any corresponding structure disclosed in the specification.  Judge Linn joined Judge Moore's opinion.  Judge Newman dissented. 

Describing, Enabling, and Defining: 35 U.S.C. § 112 (1) requires that a claimed invention be fully described and enabled. In addition, the claims must be drafted in a manner that particularly identifies the scope of rights being claimed.  35 U.S.C. § 112 (2).  Although overlapping, these three requirements—written description, enablement, and definiteness—are separate and distinct requirements. Thus, a claim may fail the definiteness requirement even though the invention sought to be patented was fully described in the original specification in "full, clear, concise, and exact terms" and in a way that "enables any person skilled in the art … to make and use the same."

Means-Plus-Function: Patent claims ordinarily recite particular "structure, material, or acts" as elements that both provide for the inventive step and limit the scope of rights. 35 U.S.C. § 112 (6) allows a patentee to alternatively draft limitations as "a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." To a lay reader, these means-plus-function claims appear quite broad. For instance a claimed "means for connecting elements A and B" seemingly covers any method or structure that accomplishes the claimed function. However, the statute itself require that means-plus-function claims be given a much more limited scope. Under § 112 (6), a means-plus-function claim "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Thus, to know the meaning of a claimed "means for connecting," we must look to the patent specification to see what particular connecting means were disclosed and the scope of the claim would be limited only to those disclosed structures and their equivalents. The result here is that means-plus-function claims typically have a scope that is much narrower than one might expect on the initial reading.

Undefined Means: In recent years, a number of means-plus-function claims have been invalidated as lacking definiteness under § 112 (2). (I.e., invalid as indefinite). Courts follow the following approach: (a) The statute requires that a means-plus-function element be defined according to corresponding structure found in the specification. (b) If no corresponding structure is found then the term cannot be defined and (c) is therefore invalid as indefinite.

This case offers yet another example of claims being held invalid based upon means-plus-function claim elements that lack corresponding structure in the specification. The claims recite a "control means for controlling [an] adjusting means." The patentee argued that its disclosure of a general purpose computer was sufficient structure because a computer would be able to accomplish the task-at-hand. On appeal, the court rejected the patentee's argument and affirmed that such a computer was insufficient structure since a general purpose computer could not accomplish the function required by the claim. The court wrote that the patentee could have satisfied the requirement by additionally including the algorithm that the computer would use to accomplish its task."

If special programming is required for a general purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.

Thus, the means-plus-function limitation has no corresponding structure in the specification because "there is no algorithm described in any form for the function of 'controlling the adjusting means.'" As a result, the claim is invalid as indefinite.

In an extended dissent, Judge Newman argued that the ruling amounts to a formalistic technicality that is unfair to patentees – especially when the enablement and written description tests are not offended by the claim.

Disfavored by Patentees: Because of their narrow scope and high-likelihood of invalidity, "means for" claiming has been on a steady decline for the past two decades. The chart below shows a time series of the percent of patents that include at least one "means for" claim limitation. (Note – my search was for "means for" and so some MPF claims are not counted). These days, the only ones being caught in this trap are either (1) being poorly advised or (2) attempting to improperly extend the scope of their patent beyond what was actually invented. In my view, prudent patent applicants today never rely on MPF claims as their broadest or strongest claims. However, many still find some role for those claims and it is important to recognize that means-plus-function claim scope varies dramatically on the international level.

Device for: The majority opinion suggests the next frontier of challenge – patent claims that rely heavily on functional language but that do not use the magic "means" language. Here, the court at least suggests that an equivalent claim drafted as a "device for controlling" would have been invalid under the same analysis. The court wrote "The [hypothetical] recitation of 'control device' provides no more structure than the term 'control means' itself, rather it merely replaces the word 'means' with the generic term 'device.'"

30 thoughts on “Means-Plus-Function: Invalid as Indefinite

  1. How many times was former Chief Justice Rehnquist in the dissent? He stated quite clearly that he was going to hang around long enough to see some of the decisions he dissented in get reversed.

    As to your question about whether it is possible that everyone else is wrong so often, as J. Newman was actually a practicing patent attorney, and some of the other judges were, e.g. Congressional committee staffers, the answer is: yes, it is quite possible that everyone else is wrong so often.

  2. How many dissents does a judge get before the banhammer is unleashed? Is it really possible that everyone else on the panels is wrong so often?

  3. “In any event, I would think she’d be dead by the time I get there.”

    Given your current progress in getting into law school, you’ll probably be dead by the time you get there too.

  4. “perhaps you may wish to use the same term should you ever be called upon to argue before a panel of the CAFC on which she may be sitting.”

    Maybe, maybe not. She seems like a pretty nice gal in person. It’s too bad her opinions come out all in a way that people take wrong.

    In any event, I would think she’d be dead by the time I get there.

  5. Since you appear quite comfortable here using a term of “endearment” regarding Judge Newman, perhaps you may wish to use the same term should you ever be called upon to argue before a panel of the CAFC on which she may be sitting. I am sure it would establish instant rapport and materially benefit your client’s cause.

  6. Well, I always include one means-plus-function claim because they appear very broad and usually require the alleged infringer to undertake an enormous amount of effort to get to a 112 invalidation in face of broad language they likely infringe.

  7. “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.”

    When the Supremes finish the much-needed frontal lobotomy of the theoreticians responsible for the absurdly unconstitutional “Affordable” health act, they then urgently need to call in all of the social studies majors at the CAFC for a Teaching Lesson. Starting with “you can’t alter the plain meaning of statutes” because some tool at Yale “law” school doesn’t like it or if you’re just having a bad hair day.

  8. Malcolm, where the claim term should be given liberality or be narrowly construed, to me, should be decided on the basis of whether the claim element under consideration was really a necessary part of the invention. If the element could be deleted entirely and the claim still define the invention over the prior art, why shouldn’t the claim element be liberally construed?

    The problem I see with the Federal Circuit is that it doesn’t perform any analysis of the significance of the element before applying its rigid, formalistic rules. It really needs to loosen up a bit.

    That being said, your analysis of this case might be right in that the means for control was critical for the invention to work. If so, the claim is not only indefinite for failure to disclose corresponding structure, but also not enabled.

  9. There is nothing new about providing proper basis for features in claims, whether under 35 USC 112(6) or claims reciting structure. Black boxes are dangerous when there is no indication of their contents. It should have become a reflex years if not decades ago.

  10. The chart is interesting Dennis. Even accounting for the average of several years between filing dates and issue dates, it reminds me of the famous comment by President Truman to the effect that sometimes you need to apply a 2 by 4 between the ears, like for getting the attention of a Missouri mule, to get the full attention of the government to get it moving. Your chart suggests that it may also be true of a lot of PTO practictioners. I.e., how many hits from how many Fed. Cir. decisions over how many years does it take to get their full attention to a needed practice change? [One wonders what is going to happen when the AIA goes into full effect.]

  11. “In an extended dissent, Judge Newman argued that the ruling amounts to a formalistic technicality that is unfair to patentees – especially when the enablement and written description tests are not offended by the claim.”

    Then by all means J. Newman, tee up your Alappat for USSC review sweetheart. Wouldn’t it be a Rich rich irony if Alappat died on review in a case where the patentee himself did not want to rely on it?

    “The majority opinion suggests the next frontier of challenge – patent claims that rely heavily on functional language but that do not use the magic “means” language. Here, the court at least suggests that an equivalent claim drafted as a “device for controlling” would have been invalid under the same analysis. The court wrote “The [hypothetical] recitation of ‘control device’ provides no more structure than the term ‘control means’ itself, rather it merely replaces the word ‘means’ with the generic term ‘device.’”"

    Boldly go!

    “Most people believe that section 112 paragraph 6 was enacted to overturn Halliburton.”

    If most people believe that they plainly haven’t read Halliburton. Of they plainly don’t understand what 112 6th says.

  12. Is it really possible, Smitty, for a claim that is “nebulous in scope” to shrug off objections that it meets the enablement and written description requirements?

    Put it another way. Suppose 112(6) were repealed, and then a claim is in dispute, that is egregiously nebulous in scope. Are you saying that the written description and enablement requirements of the statute are powerless against it? No judge could ever invoke them, to do down the claim?

    Put it another way. Suppose a claim is nebulous in scope. How about construing it broadly to put its validity in issue, and narrowly when assessing infringement. Still a good idea to draft nebulous?

  13. Sort of like a certain person’s “structure” for the 5% unpure “structure”.

    Arsenic anyone?

  14. “In an extended dissent, Judge Newman argued that the ruling amounts to a formalistic technicality that is unfair to patentees – especially when the enablement and written description tests are not offended by the claim.”

    Of course, the flip side is that discarding with the “formalistic technicality” gives patent applicants license to draft claims that are nebulous in scope, which is unfair to competitors and the public at large.

  15. The mechanism is brand new and there is no commonly accepted technical term for it. “Means plus function” language may be a good way to handle it.

    I have a better idea: make up a term that encompases the function and define it in the spec. If the applicant can be his/her own lexicographer, then technical terms in patent specifications don’t have to be “commonly accepted” in order to be effective as a claim term.

  16. The mechanism is brand new and there is no commonly accepted technical term for it.

    Sounds like Newman’s whining in Abbot v Sandoz, when she argued that product-by-process claims were essential for claiming structures that were impossible to describe structurally … because the “inventor” didn’t know what the structure was.

    Ridiculous and sad.

  17. You have four different embodiments of a mechanism, all embodiments performing the same general function. The mechanism is brand new and there is no commonly accepted technical term for it. “Means plus function” language may be a good way to handle it.

  18. This is just Moore walking further down her path. She is wrong. One skilled in the art knows what the structure is. She is going to make it hard to write patent application.

  19. LOLZ – like “isolating”

    LOLZ – try “isolated”, which is structurally descriptive of Myriad’s claimed products, not “functional”.

    Man, this blog has dxmbest trolls.

  20. Include “means” language in your claims and the Federal Circuit slaps you down. Nothing special there. Anybody who drafts a “means plus function” claim these days (or anytime in at least the last several years) should have their head examined and make sure that their malpractice premiums are paid up.

  21. Max, it only causes harm. It really needs to be repealed.

    Prior to Halliburton, means plus function claims were construed to cover the corresponding structure and equivalents in court. Halliburton made it clear that means plus function claims were indefinite if the most crucial element of the claim, the point of novelty, were claimed using means plus function. Implicitly therefore, the court had no problem using means plus function to claim old elements.

    Most people believe that section 112 paragraph 6 was enacted to overturn Halliburton. In point of fact that legislation introduced by the so-called drafting committee headed up by Giles Rich was overwhelmingly rejected by Congress. The language that Congress later enacted can be read as a confirmation of Halliburton because a Supreme Court case, Faulkner v. Gibbs, that came out just before the ’52 Patent Act, affirmed the Supreme Court’s understanding that means plus function were not objectionable at all in combination claims. Together, the two Supreme Court cases found objection only with means plus function at the point of novelty. They had no objection where old elements of a combination were expressed in means plus function terms and the novelty lay in the combination.

    Given that the ’52 Patent Act used this exact terminology of Faulkner v. Gibbs, and rejected the terminology introduced by Rich, one has to assume and one should assume that Congress was intending to enact the two Supreme Court cases, not overturn them.

    But subsequent history was written by Giles S Rich himself, and so the story was told that section 112 paragraph 6 was intended to overrule Halliburton. While that might have been the original intent of the patent bar, that may not have in fact be what happened.

    Given the above, I would be strongly in favor of simply repealing section 112 paragraph 6.

  22. That’s about as unpersuasive as an argument gets.

    Only if you do not classify your stuff as arguments.

  23. patent claims that rely heavily on functional language

    LOLZ – like “isolating”

  24. From Newman’s dissent:

    The specification is clear that the inventor is not claiming the control device as its invention. The patent describes the invention that is presented for patenting:

    “The basic task of the present invention is to improve a multichannel metering system such that essential operating functions are integrated on a central operating surface, on the one hand, and, on the other hand, the data fields associated with the individual fluid flow sources can be
    polled in a simple manner, and the risk of confusion of the fluids to be metered is reduced.”

    That’s about as unpersuasive as an argument gets.

  25. My immediate question, of course, was: does the inventive contribution lie in the copmputer control? And the answer? Of course.

    1. Multichannel metering system for metering preselected fluid flows, comprising:

    a plurality of individual fluid flow sources;

    a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid flow sources;

    adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;

    programmable control means coupled with said adjusting means for controlling said adjusting means, said programmable control means having data fields describing metering properties of individual fluid flows;

    an operating surface connected to said control means;

    data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;

    data output means for output of data from said control means, said data output means being connected to said operating surface;

    selector switch means forming a part of said data input means, said selector switch means including a plurality of selector switches, each selector switch being associated with a set of said fluid flow sources for representing segments of data fields belonging to a corresponding set of fluid flow sources on said operating surface, said each selector switch functionally connecting said data input means with said data fields belonging to said associated set of fluid flow sources.

    It’s like the applicant had this lame idea: wouldn’t it be nice to have a machine that you could program to deliver multiple fluids? Of course, that’s older than hills. But wait! Let’s attach a POWERFUL COMPUTER BRAIN that you can “adjust”. Throw in some crxp about “selector switches” to make the Examiner’s eyes glaze over and voila! Instant patent.

    Heckuva job, Dudas.

  26. 112(6). Only in tne USA. Next comes “control device”. Like MM, I’m loving it too.

    In cases where an enabling written description is present, does 112(6) serve any useful additional purpose. When the description is not adequately written, or falls short of enabling, what further purpose does 112(6) bring?

    Who thinks 112(6) is indispensible? If so, why?

  27. The majority opinion suggests the next frontier of challenge – patent claims that rely heavily on functional language but that do not use the magic “means” language. Here, the court at least suggests that an equivalent claim drafted as a “device for controlling” would have been invalid under the same analysis. The court wrote “The [hypothetical] recitation of ‘control device’ provides no more structure than the term ‘control means’ itself, rather it merely replaces the word ‘means’ with the generic term ‘device.’”

    I’m loving it.

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