No Surprise: Broadly Written Means-Plus-Function Terms Limited to Structure Described in Specification

Jersey ShoreRestaurant Technologies Inc. v. Jersey Shore Chicken and Klee’s Bar & Grill (Fed. Cir. 2009)

RTI sued two restaurants for infringement of its chicken fryer patent.  The maker of the accused fryer (Oilmatic) then filed a declaratory judgment action. Those actions were consolidated and are all appealed here. The claims at issue here involve a mechanism for filtering and then disposing of waste cooking oil. After construing the claims, the district court issued a summary judgment of noninfringement. RTI appeals.

The primary disputed claim term was the “means for metering oil.” As a means-plus-function term, the element is construed to cover the structures found in the specificatoin that corresponding to the claimed function as well as their equivalents. Here, the specification discloses a squeezable trigger valve for metering out oil.  To be clear, the seemingly broadly written claim term “means for metering oil” is here interpreted to mean “a squeezable trigger valve with a nozzle and its equivalents.”  The accused device uses a dipstick assembly with a rotating positive displacement gear pump.  The appellate court agreed that “no reasonable fact finder could conclude that the accused structure is idenetical or equivalent to the relevant disclosed structure.”

[A]lthough the dipstick assembly, in conjunction with the pump [of the accused device], may perform the identical function as the [claimed] squeezable trigger valve, the differences between the dipstick assembly plus a pump on the one hand, and a squeezable trigger valve with a nozzle, on the other, are not insubstantial. For example, the dipstick assembly and pump are activated with a push button on the dipstick assembly that energizes the pump; fluid pressure in the line then overcomes a spring-loaded check valve to pour into the fryer. The accused system thus uses a pump and fluid pressure to overcome a check valve, whereas the patent claims a valve that is squeezed.

Hal Wegner writes: Restaurant Technologies represents yet another teaching example to remind the patent drafting community to either stop using “means” claiming or to recognize the severe limitations of this claim form and to comply with the requirements set forth in 35 USC § 112, ¶ 6.

Non-Infringement Affirmed

41 thoughts on “No Surprise: Broadly Written Means-Plus-Function Terms Limited to Structure Described in Specification

  1. 39

    “Hal Wegner writes: Restaurant Technologies represents yet another teaching example to remind the patent drafting community to either stop using “means” claiming or to recognize the severe limitations of this claim form and to comply with the requirements set forth in 35 USC § 112, ¶ 6.”

    Registered patent attorneys have to be reminded to comply with 112, sixth paragraph when writing “means plus function” claims???

    That’s interesting.

  2. 38

    RedMonkey, I think the “flaw” in most peoples minds on this issue is that they fail to consider how construction of terms like “baffle” actually happens in court. In the end, the analysis is the same (or should be the same) as with MPF.

    Circling back to history, in Halliburton, the lower courts had construed the MPF element to cover the corresponding structure described in the specification an equivalents. The Supremes overruled because they viewed the broad claim language which literal embraced all equivalents, including those yet to be invented, as a problem by itself. Congress overruled the Supremes with Section 112, p.3, now 6, by permitting MPF claim elements, but providing the rule of construction of the lower courts in that case.

    What one fails to appreciate is that the rule of construction generally is that the claim terms either have their ordinary well understood meaning, or they cover the corresponding structure described in the specification and equivalents, without importing unnecessary detail. That is what was really reiterated in Phillips. Phillips was really not new.

    So, in the end, the construction of MPF and ordinary terms should be the same in the ordinary case.

  3. 37

    “Word.”

    Mooney is trying to be the Will Smith of patent law… A real hip hop dude. How clever. Yawn.

  4. 35

    “On this issue I think I can speak for all Europeans but you can’t speak for all Americans …”

    Ah, but We just did.

    Cheerio!

  5. 34

    On this issue I think I can speak for all Europeans but you can’t speak for all Americans because in Europe, whether:

    baffle = baffling means

    is a futile, meaningless, pointless question, whereas, in the USA, there is something to discuss.

    If the shoe fits, you (and your fellow thinkers) are welcome to put it on. That’s fine with me.

  6. 33

    For the less experienced claim drafters, I think it is worth noting that a generic or broad “spirit and scope” clause at the end of the specification rarely serves to expand the scope of a MPF claim (or most other claims). The following clause was at the end of the spec of the patent at issue (US 5,245,911):

    “… It is clear that those skilled in the art will be able to modify the embodiments of the present invention as described herein in view of the teachings of this disclosure. **For example, other and different valve arrangements may be employed.** … These and other changes within the spirit of the attached claims will become evident following a reading of the description herein.”

    Even though “other and different valve arrangements” are mentioned, there is nothing here that would indicate that the inventor was in possession of any other embodiment of his invention except that which was explicitly described earlier in the spec. If the clause had included more detail regarding alternative valve arrangements, the outcome may have been different.

  7. 32

    The main difference between “baffle” and “means for baffling” is that the latter includes within its scope recent case law on means plus function claiming.

  8. 31

    “You speak for them all, do you, Yes?”

    Only to the same extent as you spoke for all Europeans in your original comment. We think you’re a little quick to criticize.

  9. 30

    Actually, MaxDrei, et al., I think the result would be the same. Phillips taught us that it was error to incorporate unnecessary limitations into the claim. A “baffle” is something that perform the function of baffling found in the specification according to Phillips. There the question was whether a baffle could mean a perpendicular baffle where only angled baffles were disclosed. Since the perpendicular baffles performed the baffling function, they were baffles.

    So, what if we start with a claim that simply recites the function. We look to the specification and find angled baffles. But, under Section 112, p. 6, the claim also covers equivalents. A perpendicular baffle is a clear equivalent.

    So the answer is the same.

    Which leads me to ask the question: given real world claim construction, is there any real difference between functional claiming and non functional claiming?

  10. 29

    You speak for them all, do you, Yes? I wonder how long before you are using the royal “we” when you comment.

  11. 28

    “He told you to think about it. Have you done that yet? If so, may we know your conclusions?”

    No, to both questions. It turns out the question isn’t that interesting for Americans either, but I did want to address your feeling left out.

  12. 27

    Hi Yes. Good point that. Good that you point that out. Quite right of course. It’s not just Americans to whom the question was addressed.

    So, you answer Ned’s question. “Should” there be a difference? In America. For Americans? When doing US patent claim construction?

    He told you to think about it. Have you done that yet? If so, may we know your conclusions?

  13. 26

    “But I think your exhortations are aimed at Americans, right?”

    No, not necessarily, but his question is aimed at a case involving a US patent.

  14. 25

    Ned, for Europeans, your question is not interesting, for over here a “baffle” is not more and not less than a “means for baffling”. Means for baffling is the apparatus structure that discharges the step of baffling, in the corresponding method aspect of the invention.

    But I think your exhortations are aimed at Americans, right?

  15. 24

    All, should there be a difference in result in Phillips if the claim said “means for baffling” rather than baffle?

    Think.

  16. 23

    “the bottom line is we can seldom re-write foreign origin applications to add support for MPF claims, because only a few, well-heeled, clients will pay for this service”.

    The same applies to foreign counsels:when your original application has been drafted with MPF claims because it makes sense eg in Europe, only a few well-heeled clients would pay for having an additionnal specific set of claimsfor US filing.But basically you do not have this option when you file a pct :your spec and then your claims are”frozen” in their original form!

    Anon:
    yes most of foreign laws(incl. EP Law) include articles similar to 112.6.

    7:
    Yes”From what I see, most ROW originated applications are drafted terribly”
    and from what i see (in Europe) most US pat applications are drafted terribly either!
    because they are not reviewed before filing sometimes because you do a pct filing.
    A US application has typically several examples(this is good) with no “link” between them(no general language in the description in terms of “means for doing this or that” describing the function ;eg example 1 will disclose a nail to assemble two pieces of wood, example 2 will disclose a screw to assemble two pieces of metal , but typically nowhere in the spec will you find the description of a “means for assembling two pieces together, including nail, screw or the like”) and this is bad because you end up usually after examination with one independant claim for each example ;which means several divisionnal applications.(because you do not have the right to introduce this general wording in the claims during prosecution unless this wording is in the spec as filed)As the client does not want to pay for several divisionals, at the end of the day you keep one patent corresponding to one example.And the others are lost.Just because of a poor drafting.

  17. 22

    Luke, the bottom line is we can seldom re-write foreign origin applications to add support for MPF claims, because only a few, well-heeled, clients will pay for this service.

  18. 21

    “But funny you should ask, because IMHO nobody is more afraid of second opinions than patent practitioners.”

    The concept doesn’t frighten me in the slightest, it’s just not something I’ve seen discussed before. I agree that there are a lot of flawed claims that would be easy to spot. But if I’m going to get into the second opinion business, I have to assume that sooner or later I’m going to have to endorse some of these claims. I’m simply wondering how much I would have to charge to take on the professional liability associated with endorsing someone else’s work. Could I really just spend a couple of hours looking at a case that I’ve never seen before and tell a client that he’s good to go?

  19. 20

    “But funny you should ask, because IMHO nobody is more afraid of second opinions than patent practitioners. The primary reason being endemic incompetence, as this case clearly demonstrates.”

    Ding, ding, ding… we have a winner.

    I would extend the need for second opinions out to all litigation and infringement related matters. I have seen firsthand examples of practitioners taking completely BS positions of law and the only reason that I can discern from such behavior is a desire to extract more billable hours from the client.

  20. 19

    BigGuy: “how much time would you need to spend reading the application and the claims and reviewing the prior art to offer it?”

    Well, first, no one suggested doing an art review, so I don’t know where you’re coming from there. We’re talking about mechanics of claim drafting here.

    If RTI had brought me their application prior to filing and asked me to review the claims just for proper form, etc., I would have charged them a few hundred dollars and saved them, probably, $50,000 – $100,000 on litigation fees and the patent as well.

    If I charged them $1000 to review the whole application or $2000 to re-write the claims, it still would have been dirt cheap.

    But funny you should ask, because IMHO nobody is more afraid of second opinions than patent practitioners. The primary reason being endemic incompetence, as this case clearly demonstrates.

  21. 18

    “Now if you believe that “most ROW originated applications are drafted terribly and give almost no disclosure. (like you, i deal with a lot of foreign originated apps)”, then can I assume you just don’t retain “means for” clams as written, right? You instead work with the client to get a more appropriate wording, right?”

    You would be surprised how many foreign originated applications are being filed by paralegals and never even being “reviewed” by an attorney.

  22. 17

    “This case is a poster case for the concept that inventors should take the final version of draft claims to a second firm to get a second opinion.”

    Really? Have you ever seen this done? If someone came to you for a second opinion, how much time would you need to spend reading the application and the claims and reviewing the prior art to offer it?

  23. 16

    IMHO, unconditional the bad-mouthing of MPF probably goes too far. MPF has its place.

    If the inventor has only conceived one structural way to provide a function, then I agree: a MPF is useless, problematic and should not be allowed to extend the scope beyond that structure and its equivalents.

    But if the inventor has conceived of 5 structures that perform the function, then an MPF claim can save you 4 claims. Just be sure you set forth each of the 5 structures sufficiently in the spec. As a bonus the MPF gets you the equivalent of each structure identified. So MPF can be a claim-leveraging mechanism within the confines of the specification.

    Most of the MPF problems arise when drafters over-draft by hanging a function on every single claimed structure — just like Claim 1 in RTI.

    Simpler example — in a claim for a hand saw:

    A hand saw comprising: a) a saw blade for cutting wood, and b) a handle for holding said saw blade.

    All you need is:
    A hand saw comprising a saw blade and a handle, wherein said handle is connected to said saw blade.

    That claims the elements and their physical relationship without reference to function. If you need a bunch of functional limitations to get you past the prior art, you probably don’t have a patent. But the inclination to limit structure by its function is more than a lot of drafters can overcome.

    The sample claims 1 and 8 in the RTI case were disasters waiting to happen. This case is a poster case for the concept that inventors should take the final version of draft claims to a second firm to get a second opinion.

  24. 15

    Yeah well Mr. Wagner that is great advice, using hindsight. The patent issued well before the In re Donaldson opinion. The fact is that no one really knew the meaning of 112, paragraph 6 when this patent was written. I think this case is a better demonstration for the uncertainty of the value of any given claim until the Courts clearly define the law. However, there is alway Congress that may completely change the law. In 1993 I would have written means-plus-function claims.

  25. 14

    “Now if you believe that “most ROW originated applications are drafted terribly and give almost no disclosure. (like you, i deal with a lot of foreign originated apps)”, then can I assume you just don’t retain “means for” clams as written, right? You instead work with the client to get a more appropriate wording, right?”

    You assume correctly.

  26. 13

    If you read “Fundamentals of Patent Drafting” you will see that the issues of means + function claims (not forgetting step + function claims!) are discussed. So we in the UK at least have been aware of the issues for some time. However, it has to be admitted that knowledge of 35 USC 112(6) and its implications in Europe is disturbingly low. However, we should be able to rely on our US colleagues for advice on this topic.

  27. 12

    MaxDrei at the moment can think of nothing worth adding. But I have written something on the next M+F thread.

    I will read the Decision, and today’s comments. Then perhaps I will want to add something.

  28. 11

    7, I can’t speak for MaxDrei, but surely it is the job of the US agent to ensure that a foreign-originating US application filed in accordance to overseas filing practices (where “means for” statements carry entirely different meanings), is rewritten so that it complies with US practice.

    Now if you believe that “most ROW originated applications are drafted terribly and give almost no disclosure. (like you, i deal with a lot of foreign originated apps)”, then can I assume you just don’t retain “means for” clams as written, right? You instead work with the client to get a more appropriate wording, right?

    But I infer that US agents are not in fact doing this, if DC’s statistics are to be believed.

    Cheers, Luke

  29. 10

    I would like to point out that there were several means elements in the claims. I believe in most of the cases the accused device did not even perform the identical function set forth the claim, which is what one would expect for highly variant structure.

    What I object to is the Fed. Cir.’s highly cramped equivalents analysis when the accused structure does perform the identical function. We have to remember that the purpose for Section 112, p. 6 is to permit MPF as an efficient form of claiming structure that can have multiple forms and components, while at the same time providing a scope of infringement that is no broader than the equivalent of the disclosed means. But the way the Fed. Cir. decides equivalents essentially requires the infringing device to be the same down to the unessential and irrelevant detail. We have no filter as to relevance, which was the essence of what was decided in Philips.

    Why is it that we cannot have the same result if I claim a screw, an attacher or a means for attaching where the disclosure is a screw? The result should not depend on the form of the claim. The details of the screw unnecessary to the function should not be part of the corresponding structure for equivalence analysis.

    I had thought the Phillips case had brought MPF and other claims in to congruence. What is a baffle? It is an apparatus that performs the function of the disclose baffle but without the detail of the structure unnecessary to that function. But with MPF, we granularly focus the attention on irrelevant detail to determine that the accused device is not the equivalent. What we get is mindless drivel from the Federal Circuit and very rough justice for the patentee.

    Remember the very first equivalence case decided by the Supreme Court? It involved a coal car shaped like a cone, IIRC. The prior art had rectangular shapes. The accused coal car’s cross section was octagonal, not exactly round, but certainly not rectangular. The Supreme Court decided the accused device was the equivalent because limiting the claim to exactly round would be an manifest injustice because one of ordinary skill would recognize the equivalence and think the court nuts not to find infringement.

    I have no specific comment on this case as I have not fully studied it. I provide this comment for discussion.

  30. 9

    bleedingpen–

    Agreed, mostly. The other claims were picture claims, and the various means were exhaustively enumerated in the spec, so much so that it seemed almost absurd.

  31. 8

    “I have filed MPF claims, but in conjunction with non-MPF claims, as mmm suggested above.”

    I think this is fools gold just like using only MPF claim terms.

    If I claim:

    A widget with adjusting means.

    A widget with an adjusting mechanism.

    Both of those claims will be construed as means plus function claim terms. The presumption standards will change slightly depending on the explicit use of “means for” but both will ultimately be construed as MPF terms.

    If you want a “back up” claim that covers your product and not much else, picture claim it. Don’t be lazy and go the MPF route.

  32. 7

    I’ve often wondered about how the narrowing of MPF claims interacts with the applicant-as-lexicographer concept.

    I have filed MPF claims, but in conjunction with non-MPF claims, as mmm suggested above.

    What would happen if, say “means for attaching” was recited in the claim, and the spec clearly and unambiguously defined “means for attaching” in other functional language, and specifically not limiting it to any particular structure or device?

    e.g. “said means for attaching including any possible current or future device or devices for permanently fixing A to B”, or something like that

    My guess would be a 112 violation for metes and bounds, or failure to specifically point out the invention?

  33. 6

    Well, to be fair 7, does the EPO or JPO have anything like the requirements of 112, 6th? What I see now is a huge problem with writing global application. I mean, I used to write applications that were regularly filed in countries all over the globe to capture particular markets. In the past, we could prepare a pretty decent application that would satisfy all filing countries. However, there are things happening now that pull in opposite directions, for example, the EPO’s PSA and US’s KSR. I’m getting too old to keep up with these never-ending changes.

  34. 5

    I’ve said it before, there is almost no incentive to stop using MPF claims. So long as there is even the tiniest amount of disclosure in the specification, they are patent trolls dream come true:

    Word.

  35. 4

    Anon,

    I wonder what MaxDrei will say? He always talks about the superiority of foreign drafted applications. From what I see, most ROW originated applications are drafted terribly and give almost no disclosure. (like you, i deal with a lot of foreign originated apps)

  36. 3

    I’ve said it before, there is almost no incentive to stop using MPF claims. So long as there is even the tiniest amount of disclosure in the specification, they are patent trolls dream come true:

    * They increase the cost of infringement analysis.

    * They are subject to often tricky claim construction.

    * They make finding invalidating references more difficult.

    * The scope of MPF claims are the subject of reasonable disagreement.

    * And, most importantly, they READ very broadly!

    That said, patents that rely entirely on MPF claims are doomed, but that’s traditional claims are presented first to be followed up by one or more similar claims written with MPF claim elements.

  37. 2

    ItsAllAboutTheWords, that is a daily quandary for us. It seems almost all the filed applications of foreign origin that I work on have means-plus-function recitations, but no described structure! We have been nudging to the clients that more money must be spent on the front end before filing these.

    Another familiar image posted by DC, which reminds me of the things I miss most about the (South) Jersey shore: the “patented” Italian and cheese steaks subs. No one around here in DC comes close to infringing these NJ items!

  38. 1

    “Either stop using the “means” claiming or to recognize the severe limitations of this claim form and comply”

    In many cases, although not here as far as I can tell, the MPF is imported from the original foreign language specification where MPF carries different connotations.

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