Lighting Ballast at the Supreme Court: The Role of Extrinsic Evidence in Claim Construction

by Dennis Crouch

In Lighting Ballast, construction of the claimed “voltage source means” has been the subject of five different court opinions. Three interpreted the claim term as a means-plus-function limitation and the other two found it not to be in MPF form.  The distinction is important for the case because it serves as a validity trigger.  The patent specification did not describe an embodiment of the voltage source means and so the term would necessarily be deemed indefinite if interpreted as an MPF under 35 U.S.C. 112¶6 (now renumbered as section 112(f)).

The five prior decisions included a district court reversing itself and then being re-reversed by the Federal Circuit panel whose decision was reaffirmed by an en banc Federal Circuit. Finally, after an opinionless post-Teva vacatur (GVR) from the Supreme Court, the Federal Circuit reversed course again and gave deference to the district court’s fact-finding.  The result of this last judgment was to reinstate the final district court determination that a person of skill in the art would interpret the term as connoting a structural element and thus not a pure “means” claim. This was a win for the patentee.

Now, the adjudged infringer Universal Lighting has petitioned the Supreme Court for a writ of certiorari with the following question presented:

When and how can expert testimony or other extrinsic evidence be used to avoid the construction of a patent claim otherwise dictated by the patent’s intrinsic record, including in particular to avoid the restrictions imposed by 35 U.S.C. §112 ¶ 6 on functional claiming?

The original lighting ballast issue focused on appellate deference – an issue largely decided by the Supreme Court in its 2015 Teva v. Sandoz decision.  Markman was also a case focused on process (judge vs jury).  As presented here, the case has the potential of shifting to substance of claim construction.  If it takes the case, the court will almost certainly need to delve into the goals and purposes of claim construction and the inherent conflicts between a claim’s most literal meaning, its drafter’s intended meaning, and the notice of scope provided to the world.

The brief was drafted by Steven Routh and his team at Orrick who also represented ULT at the Federal Circuit. Read the petition here: http://patentlyo.com/media/2016/01/LightingBallastPetition.pdf.

= = = = =

I used this case as the subject of last fall’s Patent Law Moot Court Competition (sponsored by McKool Smith) and most of the arguments centered around this same issue of whether the expert testimony that a engineers understand Voltage Source Means as a structural term of art (a Battery or Rectifier) was sufficient to overcome the strong presumption that accompanies the use of the term “means.”  The students also debated whether, following Williamson v. Citrix, any such presumption should still exist.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

94 thoughts on “Lighting Ballast at the Supreme Court: The Role of Extrinsic Evidence in Claim Construction

  1. (I also posted this as a response to comment 1.1.1.1 by Dennis.)

    Hello everybody! Nice to see you all still here. Not nice to see that patent law is apparently still struggling with the most basic of issues.

    I strongly question the logic in Dennis’s statement, and therefore disagree with the conclusion.

    This “issue” results from nothing other than grammatical imprecision.

    The word “means”, as used, is the noun, and the word “nail” or words “voltage source” are modifiers that enable the comprehension of the specific means required; because they are modifiers, they are incapable of describing a particular physical structure, in the same way as would a noun.

    Properly, a means claim should probably be expressed more in this fashion: “means for nailing”. “Nail means” has no proper grammatical meaning, as far as I can tell. Even “nailing means” would be correct.

    Similarly, “voltage source means” has no proper grammatical meaning. “Means for creating a voltage” (followed by the further modifiers as found in the claim) would be correct.

    This claim fails 112b as failing to point out and distinctly claim the invention, as it fails to properly describe any function as an end of the completely undefined “means” attempted to be claimed.

    Grammatically, the claim is not MPF, and therefore 112f is never reached.

    Further to my suggestion of many years that all claim terms should be limiting, all claims should also adhere to the rules of grammar. Those rules are well-defined, and adherence thereto is entirely within the control of the applicant.

    Once again, I see this as an incredible basic, simple issue. Every time I come back here for a peek, I’m glad I’m no longer involved in the dead end that is patent law.

    1. IBP,

      Do you mean something like: link to chompchomp.com ?

      (I am not sure I can agree with you that modifiers do not “they are incapable of describing a particular physical structure, in the same way as would a noun.” – as anything of description – phrase, prepositions comprising adjectives, adverbs, and nouns all act in the same grammatical sense)

      1. Additionally this assertion: “they are incapable of describing a particular physical structure” is irrelevant.

        They don’t need to describe particular structure. They can and do describe a broad class of structures understood by those of ordinary skill in the art.

        1. They do not. They add particularity, specificity, and precision to the description of structure that is achieved by the recitation of the noun “means”.

          Courts and administrative bodies should not have to, and should not, bend over backwards to accommodate the inarticulation of an applicant or patentee. Why not? Because it is terribly inefficient, and is EASILY avoidable.

          Look at the resources directed toward this issue. Absurd. Then consider what will happen after the issue’s “resolution”; it is very likely that it will create yet more inefficiency.

          And so easily avoidable, through the application of only the slightest amount of rigor.

          This is the type of thing that drove me insane while I was involved in the patent system. So needless, such a waste of time, in a life where time is finite. There is little to no actual advancement when the bedrock established tools of the trade aren’t even used, such as the rules of grammar.

          Total freedom of expression is allowed with adherence to said rules. As I said in another comment, the applicant is entitled to be his own lexicographer, but not his own grammarian.

          Small wonder that it is the stagnated public sector that has landed patent law in this situation. Such a waste.

          1. I’m not arguing with your main point. Though I would note that it is intolerant of foreign inventors, imperfect translations, pro se inventors and the like. I am arguing with the postion that recitation in a claim must recite PARTICULAR structure, rather than a broad class of structures. No one would object if a claim called for a nail. Even though the particular size, material, treatment and type of nail is not recited.

  2. Hello everybody! Nice to see you all still here. Not nice to see that patent law is apparently still struggling with the most basic of issues.

    I strongly question the logic in Dennis’s statement, and therefore disagree with the conclusion.

    This “issue” results from nothing other than grammatical imprecision.

    The word “means”, as used, is the noun, and the word “nail” or words “voltage source” are modifiers that enable the comprehension of the specific means required; because they are modifiers, they are incapable of describing a particular physical structure, in the same way as would a noun.

    Properly, a means claim should probably be expressed more in this fashion: “means for nailing”. “Nail means” has no proper grammatical meaning, as far as I can tell. Even “nailing means” would be correct.

    Similarly, “voltage source means” has no proper grammatical meaning. “Means for creating a voltage” (followed by the further modifiers as found in the claim) would be correct.

    This claim fails 112b as failing to point out and distinctly claim the invention, as it fails to properly describe any function as an end of the completely undefined “means” attempted to be claimed.

    Grammatically, the claim is not MPF, and therefore 112f is never reached.

    (I also posted this as a response to comment 1.1.1.1 by Dennis.)

    Further to my suggestion of many years that all claim terms should be limiting, all claims should also adhere to the rules of grammar. Those rules are well-defined, and adherence thereto is entirely within the control of the applicant.

    Once again, I see this as an incredible basic, simple issue. Every time I come back here for a peek, I’m glad I’m no longer involved in the dead end that is patent law.

  3. Today’s vocabulary:

    ob·jec·tive
    əbˈjektiv/
    adjective
    1. 1. (of a person or their judgment) not influenced by personal feelings or opinions in considering and representing facts.

    “historians try to be objective and impartial”

    synonyms: impartial, unbiased, unprejudiced, nonpartisan, disinterested,neutral, uninvolved, even-handed, equitable, fair, fair-minded, just,open-minded, dispassionate, detached, neutral

    “I was hoping to get an objective and pragmatic report”

    .

    vap·id
    ˈvapəd/
    adjective
    1. offering nothing that is stimulating or challenging.
    “tuneful but vapid musical comedies”

    synonyms: insipid, uninspired, colorless, uninteresting, feeble, flat, dull, boring,tedious, tired, unexciting, uninspiring, unimaginative, uninvolving,lifeless, tame, vacuous, bland, trite, jejune

    “a tuneful but vapid musical comedy”

  4. At 5.1 Ned kindly explains how 112-p6 got into the statute. If the courts were indeed on track to find “most patents at the time” indefinite, then The Congress had to do something, and fast.

    What was done was to patch the statute with 112-p6. The effect? to render the validity of claims dependent upon some difficult new criteria, inter alia:

    112-p6…… Yes or No?
    To what extent is the functional feature disclosed in the specification?
    What is “equivalent” to that disclosure?

    It is often said that tinkering with the engine only makes it run less (rather than more) efficiently. So here, with 112-p6.

    Ned wants 112-p6 repealed. Anybody else?

    But if that’s not on, how I wonder will SCOTUS now patch the patch, to clarify the law rather than obfuscate it even more? It’s a good case for them, ‘cos the facts are so childishly simple. Everybody knows what “voltage source means” means, don’t they?

    Fascinating.

    1. I do find it fascinating that the “patching” being sought is evidently not cognizant of the difference between statutory law and common law and the seemingly lack of respect for the US sovereign with calls to the wrong branch of the government to do that “patching.”

      Why even Ned Heller posted a link awhile back with Judge O’Malley sounding a warning to amici urging courts to try to do the work that the legislature is meant to do.

    2. This is a simple trivial issue to all those that are not anti-patent judicial activist. Scope of enablement to one skilled in the art. Simple. That is what has always been intended. That is the only possible solution.

      Note that the anti-patent judicial activist never propose a solution that is even remotely tied to reality. All you have to do is look at a few real inventions like I do every day and three is simply no way to claim all the solutions to sub problems without functional claiming.

      Just another giant smoke screen by the obfuscators and K Street. Shameful display.

      1. Night, I think I agree. Scope of protection commensurate with what the inventor has contributed to the art and has enabled. Simple.

    3. Max –

      The triggering language for 112 – 6 is “means for.”

      That language was not used here.

      The courts have caused the confusion by over interpreting both the statute and the claims.

      “Interpretation” is there only tool.

      When the only tool you have is a hammer, everything starts to look like a nail.

  5. Why did the Congress feel it necessary to write 112-p6 into the statute, given that M+F claims were the world-wide norm and caused no particular problem in any other jurisdiction?

    Perhaps because of the difficulty, under the USA’s ultra “strong” patent system, of finding over-broad claims to be invalid. The C+C presumption of validity, I’m looking at you.

    Two wrongs don’t make a right though. The skewed and unbalanced C+C presumption of validity, unique to the USA’s “strong” patent system, is still having its malign effect, even today. Not only on claim construction, but also on refusal to grant injunctive relief from infringement of claims not found invalid.

    1. Max, Halliburton had held claims to structure, functional at the point of novelty, to be indefinite.

      The rule of construction at that time was that functionally claimed structure covered the corresponding structure and equivalents.

      Because most patents at the time were claiming structure functionally, there was concern for their validity. Thus the urgency to enact the rule of construction to preserve the validity of existing patents.

      Still, that did nothing about the indefiniteness that concerned the Supreme Court. In fact, it specifically authorized it.

      1. Thanks Ned, for that concise history of the provision. Now I wonder if the Halliburton case contributed to the drafting of the EPC, specifically to exclude lack of clarity in a claim as a ground of invalidity. With patent law, as in everything else, jurisdictions watch each other, to lerarn from their mistakes.

        Let’s face it, no claim that ever issued is with words that are 100% clear and 100% definite.

        1. This is hilarious.

          MaxDrei bends over backwards to “thank” Ned at the very moment that Ned comes closest to being inte11ectually honest and affirms what I have LONG been trying to get him to recognize.

          Such servile “politeness” merely to a fellow Echo reeks of link to dictionary.reference.com

          Ned,

          Do you even recognize what your admission here includes?
          Thus the urgency to enact the rule of construction to preserve the validity of existing patents…. In fact, it specifically authorized it.

          No more anti-Rich scapegoating – the “it” and “they” that you mention was Congress enacting that which you just don’t “feel” should be the law, but IS the law.

          No more “Haliburton was not abrogated with a mere codification” – Congress, yes Congress CHANGED the law to enact something that you – today – don’t “feel” should be the law, but IS the law.

          Also, as I have pointed out, the use of terms of functional language was NOT constrained ONLY to 112(f), but as Federico notes, THAT use of terms of functional language is authorized TROUGHOUT 112 whenever you have more than one item in the claim – ANY time you have a combination claim that is not effectively a “single means” claim. One day you will actually acknowledge the law – as written by Congress – that eliminated the “Point of Novelty” as you attempt to use that term expressly because the claim as a whole IS what you attempt to use as a “Point of Novelty.” It is only when the claim is a “single means” type of claim that you run the risk that you “feel” pervades the use of functional terms.

          As Federico noted, Congress opened wide the use of such claiming.

          On purpose.

          Now, let’s see if we can get you to recognize the basic difference between statutory law and common law and have your respect the separation of powers when it comes to NOT treating the Supreme Court as if they were above the law and not ALSO constrained by the constitution (you know, which branch exactly was authorized under the constitution to write the statutory law that is patent law and all).

          1. If 112f authorizes the use of all such claims, does the ‘construed to cover the corresponding structure … in the specification’ aspect also apply to all such claims?

  6. How does one determine whether a “voltage source” that performs the recited function was a known structure at the time of the filing of the patent?

    If it was known structure, one does not need to refer to the specification to determine what that structure is.

    But whether it was known? How does one determine that if one cannot consult an expert?

    Also, note, one should not put the question in the abstract. The question is whether X is known structure for doing the Y function recited.

    1. Ah, those aren’t the crazy rules associated with MPF. Once you get into MPF, what one skilled in the art knows is immaterial. It’s ludicr ous, I admit, but those are the rules.

      1. Patent Bob, not so. 112(6) applies when there is no structure recited that will perform the recited function. So the question front and center is whether a PHOSITA at the time of the patent would know what was a

        Voltage Source for providing a constant or variable magnitude DC voltage between the DC input terminals.

        Both a battery and a rectifier would perform this function. So it seems that the answer as to which one is covered, if only one is to be covered, depends upon the context of claim as a whole. That is why the answer in this case is that “voltage source” means a rectifier.

        Now if a rectifier, let alone any other voltage source, is not disclosed in the patent specification, I think there might be additional problem with respect to written description support. If this claim element was in the claims as filed that might be sufficient.

    2. 1. It doesn’t have to be a known structure. It only has to convey structure understood by one of ordinary skill in the art. The conveyed structure can be new.

      In the present case, anyone who has ever taken electronics 101 (even if they got an F) would know that one of ordinary skill in the art would know what a voltage source means of the type recited is. It is any of an untold number of circuits that, within the limits of its operating range, provide what ever current is demanded by a load, at a requested voltage (i.e. voltage set point).

      a quatloo source means would be understood by even those of only ordinary skill, to be any means from providing quatloos.

          1. Les, if a PHOSITA does not know at the time the patent issues what is covered, the claims are indefinite. The PHOSITA must KNOW what structure is claimed, otherwise the claim is indefinite. You cannot avoid this.

            Otherwise the claim has to be construed to cover the corresponding structure. If there is no corresponding structure than the claim is indefinite. We get there regardless of 112(6).

            Now with respect to known structure, one can describe that functionally because even described functionally will people know what you are talking about. You get that known structure and equivalents as your scope. You do not get anything and everything that may perform the recited function in the future regardless of whether or not that future structure is an equivalent of the disclosed structure. That again is inherently indefinite because one cannot know reliably whether one infringes if one assumes, and I think it is the law, that one is not entitled to claim subject matter that is not the equivalent of what one discloses.

            1. Ned:

              a claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph does not apply.

              “The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1349, 115 USPQ2d at 1111; see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).

              There is no indication that the structure has to be old Ned. Only that a person of ordinary skill would understand what structure is called for.

              That’s from MPEP 2181, by the way…

              1. Less, one can understand the meaning of words in a claim, but the real question is whether or not one knows what is covered. I think everything is changed since Nautilus. You cannot rely on anything in MPEP on the issue of definiteness that does not consider the impact of that case.

                What is covered? What structure is covered is the question. One must know this at the time the patent issues. Thus it becomes paramount to answer the question as to whether one of ordinary skill in the art would know what a voltage source means in the context of the claim. If one does not know that, then one has to search in the specification for the corresponding structure. You get there regardless of 112(6).

                1. Unless the voltage source was recited to be spaced from the rest of the ballast, I’m not sure why Nautilus would have any bearing here.

                  You gonna reach for your eraser tip again?

            2. Well Ned when I read “voltage source” or “voltage source means” I think of a wide variety of circuits built around chips like the LM 7805 (which is a linear device) and other chips that facilitate implementation of switching power supplies and I understand that similar devices will be made available in the future. They are all voltage sources and “equivalent” from a claim reading perspective. though I assume the future ones will have some advantage from some perspective. (e.g.,cheaper, more efficient, smaller).

              So, since all related future structure is “equivalent,”I say the inventor gets all future voltage source structure….

              1. Les, we have a battle of experts even here in Patently O. Some say one knows what the structure is, some say that one does not. Who is to say who is right?

                I suggest what we have hear is an issue of fact and that has to be resolved by the trier of fact – the judge.

                1. Yes, by all means, lets leave it to the poli-sci major so she can read more words into the statute that are not there.

          1. errr…a charged battery qualifies until it becomes so discharged that it no longer provides the required current at the requested voltage..

      1. If that’s the case then there must be unexpected results flowing from the combo and/or teaching away that was overcome by some other structure recited in the claim. You can’t have it both ways.

      2. “It is any of an untold number of circuits that, within the limits of its operating range, provide what ever current is demanded by a load, at a requested voltage (i.e. voltage set point).” Although the term “voltage source” is understood by someone that takes an electronics course, it doesn’t refer to a particular a structure. In design terms, it is often a placeholder because any voltage source will do. Similarly, someone taking an electronics course would understand a “load” to be “any of an untold number of circuits that receive electric current”. In designing a power supply, the concept of load will be reduced to a few parameters like needed voltage and maximum current.

        1. NS II, so a voltage source does not define known structure? But you came up with this based upon your knowledge as one of ordinary skill in the art. Thus I presume, in order to answer the question of whether “voltage source” defines known structure is to ask one of ordinary skill in the art that question.

          Agreed?

          1. “Voltage source” has “sufficiently definite meaning ” Ned. It is a broad term and is not limited to a PARTICULAR structure, just as “nail” is a broad term and is not limited to PARTICULAR structure.

            1. Les states: “just as “nail” is a broad term and is not limited to PARTICULAR structure.

              We have several things going on here.

              We have the old adage that breadth is not the same as indefiniteness.

              We also have the ladders of abstraction.

              Another example (from the ladders of abstraction discussions) may sound familiar:

              I have in my mind “kitchen table.” What are the odds that any two people seeing this and drawing the objective physical structure will draw the same definite structure?

              For want of a nail,…

            2. Essentially, your analogy disregards the concept of indefiniteness. Any word that has not been coined will have some meaning, but being understood is not the same as describing structure. For example, people understand the concept of a “fastener”, but that term does not refer to a particular structure. A fastener is defined by what it does or how it is used, but “nail” describes a particular thing having characteristics that can be used to distinguish it from a staple or a rivet. “Voltage source” refers to something that performs the function of providing voltage, which could include a potato, a generator, or Mjolnir (possibly).

              1. It doesn’t have to describe a particular structure. Claims are allowed to be broad. Over claiming is held in check by the examination process. If the claim is too broad, it will be easy for the examiner to find prior art that reads on the claim.

                1. “If the claim is too broad, it will be easy for the examiner to find prior art that reads on the claim.”

                  Lulz.

                  That depends on just how much into “too broad” the claim gets.

      3. Les,

        Absolutely right. Radio Shack’s demise and this silly debate are a sad sign of the times.

        As pointed out below, the claims aren’t the greatest. The title and abstract are directed to a ballast. This is illustrated with input terminals B+ and B- which every POHISTA knows is where one attaches a DC voltage source. This could be a battery, or a full wave receiver with a storage capacitor, or rectified three-phase power, or whatever.

        For some reason, the claims are to an energy conversion device. I suppose they would be inoperative without reciting a source of energy (voltage source means)into the device. As a result, the claims stand or fall based on reciting an environment that has little to do with the invention.

        This was filed in 1993. My guess is that back then neither inventors nor examiners assumed means means means in a case like this.

  7. Here are my comments when I first read about the issues in this patent.

    1. The patent application was written by the inventor, who is not a native English speaker, without the assistance of a patent agent or attorney.

    The inventor means “gas discharge lamp starter” where he wrote “voltage source means”. The starter is a standard element of gas discharge lamps and is not the inventive step or concept in the patent.

    In any case, the claims as written are atrocities, and the examiner should have worked with Bobel (the inventor) to clarify the grammar and punctuation.

    Here is the preamble of claim 1.

    An energy conversion device employing an oscillating resonant converter producing oscillations, having DC input terminals producing a control signal and adapted to power at least one gas discharge lamp having heatable filaments, the device comprising:..

    Even after quickly reading the written description, I am not exactly sure which noun each of the multitude of participles is modifying especially because the claims do not have consistent punctuation (and seem to be following a British style guide instead of an American one).

    Also, as I understand the written description, the DC input terminals “convey” a control signal to the converter and do not “produce” the control signal.

    2. A clearer statement of claim 1 would be the following, but I am not completely sure the following corresponds to Bobel’s intended claim.

    An energy conversion device employing an oscillating resonant converter that produces oscillations, has DC input terminals producing a control signal, and is adapted to power at least one gas discharge lamp having heatable filaments, the device comprising…

    The above version uses American-style punctuation, to wit, a comma before “and”, and has replaced three participial phrases with a compound relative clause. I left the second “producing” which should probably be “conveying” as a participle because by British punctuation style the second “producing” had to modify “terminals” and was not parallel to the first “producing”, the first “having”, or “adapted”. “Employing” could be left as a participle because it could only modify “device”. Because the last “having” could only modify “lamp”, I left it as a participle. “Comprising” is a verbal invariant, which is the verb form of the nominative absolute and is okay as it is although I consider the nominative absolute construction to be inherently confusing and to be something that should be avoided in general.

    I don’t believe an inventor really wants a judge to guess about punctuation style and to generate the sort of parse that I just did.

    BTW, I suspect Bobel’s original language is Polish, in which the original version of the claim would have been crystal clear because of noun participial adjective concordance.

    3. The game in designing better gas-discharge lamps is how to build a better control circuit.

    Here is what the inventor says:

    The control circuits, as described in the present invention, provide superb protection for the ballast in all fault modes like: starting lamps in very low temperatures, end of lamp life and all behaviors associated with it, power-up with, so-called, degased lamps and more.

    As long as 112 sixth paragraph limits the inventor to the three improved control circuits he describes, the patent probably is not evil, but any attempt to claim some sort of class of such circuits would be quite expansive, and I don’t see enablement for any but the three circuits described.

    ——————

    My new comment. I should have clarified that 35 U.S.C. 112p6 really should be applied to the following limitation, which identifies the inventive element.

    control means capable of receiving control signals from the DC input terminals and from the resonant converter, and operable to effectively initiate the oscillations, and to effectively stop the oscillations of the converter; and direct current blocking means coupled to the output terminals and operable to stop flow of the control signal from the DC input terminals, whenever at least one gas discharge lamp is removed from the output terminals or is defective.

  8. “The patent specification did not describe an embodiment of the voltage source means and so the term would necessarily be deemed indefinite of interpreted as an MPF under 35 U.S.C. 112p6 (now renumbered as section 112(f)).”

    I’m having trouble with the logic of this assertion.

    If instead the claim recited, but the specification did not describe an embodiment of a “nail means,” would the term necessarily be deemed indefinite if interpreted under 112p6?

    1. Les, I think that you know the law — that a means-plus-function claim limitation is “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. 112p6. The court has repeatedly held that a MPF claim term is indefinite if no such “corresponding structure” is found in the specification. In this case, the specification does not mention a “voltage source”

      I should note here that the actual claim term does not simply require a “voltage source means” but instead “a voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals” — essentially a mechanism to supply DC voltage. The specification does not provide any disclosure of such a mechanism.

      1. Would there be accusations of a similar mystery or indefiniteness if the recitation was instead of “a nail means”? Or would it be immediately understood that a nail means is a nail?

        Would the recitation of “nail means” require the specification to specify galvanized or stainless, two penny or three? Roofing or finishing? Would it require disclosure of how nails are made?

        If “nail” or “voltage source” are self supporting (i.e., don’t require additional discussion in the spec), then why aren’t nail means and voltage source means self supporting?

        1. Les. This is a good question. The federal circuit doctrine is a two step process. First the court asks whether it should be interpreted under 112p6 and then, if so, the court asks whether sufficient structure was provided in the specification.

          In your “nail means” hypothetical, there is a good likelihood that the term would not be seen as means-plus-function because of the inherent structure of the “nail” term found in the claim. Thus, the second question listed above is avoided.

          1. Hello everybody! Nice to see you all still here. Not nice to see that patent law is apparently still struggling with the most basic of issues.

            I strongly question the logic in Dennis’s statement, and therefore disagree with the conclusion.

            This “issue” results from nothing other than grammatical imprecision.

            The word “means”, as used, is the noun, and the word “nail” or words “voltage source” are modifiers that enable the comprehension of the specific means required; because they are modifiers, they are incapable of describing a particular physical structure, in the same way as would a noun.

            Properly, a means claim should probably be expressed more in this fashion: “means for nailing”. “Nail means” has no proper grammatical meaning, as far as I can tell. Even “nailing means” would be correct.

            Similarly, “voltage source means” has no proper grammatical meaning. “Means for creating a voltage” (followed by the further modifiers as found in the claim) would be correct.

            This claim fails 112b as failing to point out and distinctly claim the invention, as it fails to properly describe any function as an end of the completely undefined “means” attempted to be claimed.

            Grammatically, the claim is not MPF, and therefore 112f is never reached.

            Further to my suggestion of many years that all claim terms should be limiting, all claims should also adhere to the rules of grammar. Those rules are well-defined, and adherence thereto is entirely within the control of the applicant.

            Once again, I see this as an incredible basic, simple issue. Every time I come back here for a peek, I’m glad I’m no longer involved in the dead end that is patent law.

            1. IBP, as Dennis noted, the full claim element has a function:

              “a voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals.”

              One would be inclined to treat this under 112(f).

              1. The “inclination” is one point at issue, Ned.

                The incorrectness of expanding the use of 112(f) beyond the explicit (and optional – with that option being the patentee’s [and not the court’s] call) call with BOTH words “means” AND “for” is at least one argument on the table.

                When one realizes that Congress greatly expanded the use of terms of function in claim language outside of 112(f), one can more readily clear away the attempted dust cloud kicking that all of this 112(f) has become.

                Bottom line is that notwithstanding all of the “feelings” otherwise, for combination claims it is entirely permissible for claims to reside in the Vast Middle Ground of mixed structure and the use of functional language – even if that functional language happens tobe at what YOU are calling the point of novelty (and this stems from the plain fact that any such “point of novelty” for the purposes here comes from the claim as a whole which is the aspect that meets the concern as voiced by Federico.

                When one seeks clarity rather than obfuscation, one arrives at the right understanding of the law as written by Congress.

                1. Anon, there is difference between using functional language in claims and claiming structure functionally by defining what it does not what it is. One can use functional language in claims to help explain what positively recited structure does in the context of the other elements in the claim. This is somewhat explanatory language. But the structure being claimed this known structure, and the relationship to other elements is what is being explained.

                  In contrast claiming structure functionally, one does not know what that structure is unless one looks at the specification.

                  With these distinctions in mind, what Congress was attempting to do in 1952 when it enacted what we now have as 112(f) was to authorize that which Halliburton forbade – to allow one to claim structure functionally even if it was at the point of novelty. But the new statute clarified that one did not get the full scope functionally claimed element. Congress added the construction clause consistent with the then prevailing construction of functionally claimed structure.

              2. i.e. “a means for providing a constant or variable magnitude DC voltage between the DC input terminals”

                As I have re-written it, clearly MPF.

                As it was written in the claim, in my opinion it still fails 112b via a failure to adhere to the rules of grammar, which rules were established and are maintained for exactly the purpose of ease of comprehension.

                An applicant is entitled to be his own lexicographer, not grammarian.

                1. Replace means with “voltage source” or “power supply”. Is your language MPF now?

                  If i can be my own lexicographer then I choose to use “voltage source means” to mean voltage source. I like the way it sounds and it gives me a handly TLA (i.e., VSM).

                2. As others have pointed out, the trigger of the optional choice has been (over) read by the courts expanding beyond the legislated combination of BOTH “means” and “for” to not only “means” but to a whole host of other words.

                  Apparently, there is common law (as opposed to statutory law) induced limitations to “being your own lexicographer.”

                  …and yet another example of the judicial branch muckery creating “patent profanity.”

                3. Les, the art seems to know two classes of supplies,

                  1. Voltage; and

                  2. Current.

                  A voltage source is one that supplies constant voltage.

                  A current supply supplies constant current.

                  Their structures are well known, believe.

          2. Dennis, when did the Federal Circuit overrule such cases as Rodime v. Seagate?

            “Two specific rules, however, overcome this presumption. First, a claim element that uses the word “means” but recites no function corresponding to the means does not invoke § 112, ¶ 6. See id. at 1427. Second, even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, § 112, ¶ 6 does not apply.”

            RODIME PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).

        2. Would the recitation of “nail means” require the specification to specify galvanized or stainless, two penny or three? Roofing or finishing? Would it require disclosure of how nails are made?

          In the event that 112f is invoked, the level of particularity is whatever the art would consider necessary to have only equivalent embodiments therein. So if, in the context of the claim, “nail means” would lead to unequivalent embodiments based on whether they were galvanized or stainless, but not whether they were roofing or finishing, then the spec needs to define the former particularly and need not define the latter particularly.

          If “nail” or “voltage source” are self supporting (i.e., don’t require additional discussion in the spec), then why aren’t nail means and voltage source means self supporting?

          Whether something is supported or not is dependent upon whether the writer used the term in the structural or functional tense. For example, the word “toaster” means both 1) structures that you plug into your kitchen outlets and 2) anything that can perform the function of toasting bread. (1) is definite, (2) is not absent some language which lets the user know whether the writer means campfires or not.

          1. What is a “functional tense?”

            How does that mesh with what Congress permitted throughout 112 in the Act of 1952, which opened up the Vast Middle Ground?

            Or are you still in denial of what Congress did?

          2. Why can’t the author mean anything that can perform the function of toasting.

            What if by “toaster” the inventor means the kind of toaster that you plug in in the kitchen or the kind that supports bread over a camp fire, the kind with a parabolic reflector that focuses the suns rays on a bread holder or anything in between? Markush groups are allowed. Why do things get indefinite when a word or three simply encompasses anything that would otherwise be recited in a Markush group?

      2. Assuming that 112p6 applies, do you think the outcome would be different if the drawings had a rectangle labelled “voltage source” connected between the DC input terminals?

        1. Yes, totally different outcome if we had a circuit drawing with a DC voltage source symbol.

          Of course all of this is fairly ridiculous because every PHOSITA knows the meaning of “a voltage source means” providing a DC current.

          1. Les, Ned criticises Congress for knee-jerk writing 112-6 into the Statute. So do I.

            No other country has anything like 112-6. The ever-more “ridiculous” consequences of its presence in the Statute should have been no surprise to any patent lawyer.

            Makes plenty work for patent lawyers though, doesn’t it.

                1. Newbie, there is a problem of apparent scope when one claims novel structure functionally even if the claim only covers the disclosed structure and equivalents.

                  The claims are inherently indefinite — and that is a major problem, IMHO.

                2. But that’s irrelevant to whether or not the applicant invoked 112 6th.

                  I don’t understand why anyone acts like there is a difference between ‘a voltage source means for providing a voltage’ and ‘a voltage source circuit for providing a voltage’.

                3. Newbie, I think you get it. There is no difference. And, to the extent anyone is telling you there is a difference, they really don’t know what they are talking about.

                  Means, devices, units, circuits … just generic terms that themselves imply no specific structure.

                  The question is whether one knows what structure is described by the “voltage source …. providing X.”

                4. The administrator of this site appears to draw a distinction between MPF claims and ‘hybrid functional claims’ in several articles.

                5. Newbie,

                  It is not just the administrator of the blog that makes that distinction.

                  It is Congress.
                  It is Federico.
                  It is the courts.

            1. The problem dear Maxwell is not in 112 -6, its in the courts.

              112 – 6 says if the claim says “means for” then look to the means described in the spec. Simple, clean and with a well written spec gets us close to the EU any means for interpretation.

              …then comes the courts and there insistence on legislating from the bench and interpretations of claims that do not say “means for” as nevertheless invoking 112-6…

            1. NS, is does “Rectifier providing a DC current” provide definite structure?

              If it does, does it make any difference if I add “means” into the element?

          2. Dennis, but Abstract asked about box with nothing in it but Voltage Source.

            Tell me Dennis, what is a Lambaster? Does it help if I draw a box in a figure and label it Lambaster?

            1. Ned – If you describe it functionally, I’m pretty sure one of ordinary skill in the art would then understand the structure encompassed by the term Lambaster.

              Even without a functional description, I’m pretty sure its similar to a Turkeybaster, but with adaptations that make it better for Lamb.

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