Search Results for: "means plus function"

Guidance on Examining Means Plus Function Claims

Patent

This week USPTO Commissioner for Patents Vaishali Udupa issued a memorandum to all patent examiners entitled "Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))." The purpose of the memo is to remind examiners of the resources and guidance available when examining claims under 35 U.S.C. 112(f), commonly referred to as "means-plus-function" or "step-plus-function" claims. The memo summarizes key points regarding:

  1. Determining whether a claim limitation invokes 112(f)
  2. Clearly communicating on the record when 112(f) has been invoked
  3. Evaluating the adequacy of the supporting disclosure

The USPTO has also requested public feedback on the guidance (6/18/24 deadline).  Examiners will apparently undergo some training. Although not clear if this will be enforced, it may become more of a requirement for examiners to provide a claim construction section in their office action rejections.

Although the memo is generally helpful, there are two points of guidance that are lacking, and that I discuss below:

  1. How is BRI applied at the initial stage of determining whether a claim is written in means-plus-function form?
  2. How are means-plus-function limitations evaluated under the 112(a) written description and enablement requirements. Particular, must the "equivalents" covered by the claim be adequately supported by the specification?

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

Patent

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 Cir. 2007) (non-precedential)

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

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

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

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

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

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

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

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New PTAB Informative Decision Demands MPF Construction and Parallel Litigation Consistency

Patent

In a decision newly designated as "informative" by the USPTO, the Patent Trial and Appeal Board (PTAB) provided important guidance on the procedural requirements for inter partes review (IPR) petitions, particularly consistency between IPR proceedings and parallel litigation.

Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 (P.T.A.B. Dec. 13, 2024).

In its decision, the Board exercised discretion to deny the petition because the petitioner failed to properly address claim construction, particularly whether the claim terms were means-plus-function under 35 U.S.C. §112(f). The petitioner had argued in related district court litigation that certain "component" terms (e.g., "mode-determining component," "first detecting component") were means-plus-function terms and thus indefinite due to lack of corresponding structure. However, in the IPR petition, the petitioner adopted a contradictory position—arguing that no explicit construction was needed and applying plain and ordinary meaning.

The PTAB found this contradictory position problematic because the petitioner had emphasized in district court proceedings that the classification as means-plus-function terms was "case-dispositive." The Board concluded the petitioner violated 37 C.F.R. §42.104(b)(3) by failing either to provide constructions explicitly, identify structure, or adequately justify its contradictory positions. Thus, the majority denied institution under 35 U.S.C. §314(a) due to procedural deficiencies in the petition.

The press bulletin release from the USPTO states:

In this decision denying institution, the Board addresses circumstances in which a petitioner argues in district court that a claim limitation should be construed as means-plus-function and argues in a petition for inter partes review that the PTAB should construe the same limitation using the plain and ordinary meaning. The majority opinion determines that the petition should, at a minimum, explain why the different positions are warranted or, alternatively, set forth a means-plus-function construction for the limitation.

Link.

Here, the denial was based on dual issues of (1) failure to discuss the MPF interpretation; and (2) clear contradiction with statements in the district court. Without the contradiction, I expect the panel would likely have been more lenient - especially in a situation like this where the claims do not use the word "means."  Likewise, had Cambridge Mobile acknowledged their district court position and provided some explanation for using plain meaning in the IPR context, the outcome might have been different, as the Board seems more concerned with the unexplained strategic inconsistency rather than the mere absence of MPF analysis.

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SPEX v. Western Digital: $316 Million Verdict for Means Plus Function Claim

Patent

A Central District of California jury has awarded SPEX Technologies nearly $316 million in damages against Western Digital for infringement of a patent related to hardware encryption technology. The verdict, handed down on October 18, 2024, comes after an eight-year legal battle and raises interesting questions about infringement of means-plus-function claims and the calculation of reasonable royalty damages.

SPEX Verdict

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By all Means: When Software Functions Lack Correspnding Structure

Patent

by Dennis Crouch

In a case highlighting the ongoing challenge of claim construction in software patents, the Federal Circuit has affirmed the district court’s determination that Fintiv’s asserted claims are invalid as indefinite. Fintiv, Inc. v. PayPal Holdings, Inc., No. 2023-2312 (Fed. Cir. Apr. 30, 2025).  In the software-element two-step, the court first held that the claim terms “payment handler” and “payment handler service” should be treated as “mean-plus-function” limitations under 35 U.S.C. § 112(f) because the claim terms used lacked inherent structural meaning; and then as a result found the claims invalid as indefinite because the specification lacked sufficient structural support.   U.S. Patent Nos. 9,892,386, 11,120,413, 9,208,488, and 10,438,196.

The Statutes at Issues:

  • 35 U.S.C. 112(b) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
  • 35 U.S.C. 112(f) Element in Claim for a Combination.
    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.

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