Federal Circuit Splits on Validity of Means Plus Function Claim

Telcordia Technologies, Inc. v. Cisco Systems pic-100.jpg (Fed. Cir. 2010)

Chief Judge Rader and Judge Prost sparred over the level of explanation necessary to ensure that a means plus function (MPF) claim is found definite. The Patent Act (35 U.S.C. 112 p6) permits claim limitations written as a "means or step for performing a specified function." The statute provides that an MPF "claim [limitation] shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." However, the claim will be found indefinite and therefore invalid if the specification fails to include at least some structure that is clearly linked or associated with the claimed function. “The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure.” (Quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008)).

Telcordia's patent in this case is directed to a double-ring network that is designed to withstand either a line-cut or a failed node. One element of the claim requires a "monitoring means, associated with the first ring and the second ring, for evaluating the integrity of the multiplexed subrate communications on the first ring and the second ring."

Writing for the majority, Chief Judge Rader (joined by Judge Lourie) held that the claimed "monitoring means" had been properly described in the specification. The dissent cited the same precedent but could not find anything in the specification that links disclosed structures to the claimed function. In discussing the opinion, Foley's Hal Wegner described the opinion as "pitting the leader of the older generation [of Federal Circuit Judges] against a contender from the next generation."

Stats: About 15% of newly issued patent included at least one claim having an MPF limitation. And, of those patents that include an MPF limitation, about half recite fewer than five such limitations. It appears that attorneys are using MPF claim language primarily as a back-up. Longer claim-sets are more likely to include means-plus function language. Thus 21% of patents with above-average-sized claimsets (by character count) include a means-plus-function limitation while only 11% of patents with below-average-sized claimsets include an MPF limitation. Looking claim-by-claim, I found that only 3% of the recently issued patents include means-plus-function limitations in every independent claim. Patents with MPF terms are more frequently associated with non-assigned patents (usually individual inventors). Patents arising from certain countries are much more likely to include MPF limitations. The chart below looks at the most common foreign filing jurisdiction for priority claims and reports the percentage of US patents arising from those foreign filings that include MPF limitations. [More Data]

 

24 thoughts on “Federal Circuit Splits on Validity of Means Plus Function Claim

  1. 24

    Once the stranger, you and I, only one of screen, Cordial greetings, deep blessing. Because a margin of words, deep will miss each other! My world is wonderful because of you! Plum sincerely wish you happy every day! Happiness forever!

  2. 23

    “Personally, I think WMS Gaming reached a bad result and used ridiculous reasoning to get there. But the Fed Cir has held on to it for over 10 years. I’d love to see a patentee who was invalidated under WMS Gaming/Aristrocrat ask for en banc reconsideration. That may be the best shot at getting WMS Gaming overruled. ”

    I agree, they should do away with that software nonsensically being considered “structurelol”. I lol just thinking about it.

  3. 22

    Anon said “I have a hard time reconciling the majority’s MPF ruling with the recent “software” MPF cases (Blackboard v. Desire2Learn and Aristocrat Tech v. Intl Gaming Tech.)”

    That’s because the Fed Cir uses a higher standard for M+F element where the “structure” is “software” (ie, instructions executing on a processor). If your structure is software, WMS Gaming holds that you must also disclose an algorithm for implementing the claimed function. The more recent cases cite Aristocrat for this proposition, but it’s been the law since WMS Gaming in 1999.

    The patent in Telcordia didn’t mention software or processors, so wasn’t held to this higher standard. Instead, Telcordia’s claim merely had to comply with 112 1st and 2nd, both of which are viewed through the eye of a POSITA.

    Personally, I think WMS Gaming reached a bad result and used ridiculous reasoning to get there. But the Fed Cir has held on to it for over 10 years. I’d love to see a patentee who was invalidated under WMS Gaming/Aristrocrat ask for en banc reconsideration. That may be the best shot at getting WMS Gaming overruled.

  4. 21

    Clearly I remember
    Pickin’ on the boy
    Seemed a harmless little f_ck
    But we unleashed a lion
    Gnashed his teeth
    And bit the recess lady’s breast

    Thy lion’s name is PHOSITA

    As noted, claim definiteness depends on the skill level of an ordinary artisan. Therefore, the specification need only disclose adequate defining structure to render the bounds of the claim understandable to an ordinary artisan.

    My, what unintended consequences we weave.

  5. 19

    Cowboy, your first para. Wrong. Check out the UK press today, or Google. Whatever you like. These guys all grew up in Germany.

    72 of the 90 minutes of playing time of the semi-final against Spain are up, and Spain just got the first goal of the game. This just got very serious indeed.

  6. 18

    The statistics are meaningless. The inclusion of an M+F independent claim in a claim set is just an alternative claiming strategy that should be considered for all patent applications.

    Because crrrpy claims never affect the scope of decent claims.

  7. 17

    The majority said the “means” element was crucial to patentablity (or some such.) I would expect, then, that since this element is describing the invention and not some background art, the court should require a full written description of the corresponding structure per Arriad. But, it instead only require enablement.

    So much for consistency.

  8. 15

    Infer away Cowboy, by all means. As much as you like because your inferences are very revealing. Thanks for reporting them. Feel free to carry on. I can’t be the only reader who is intrigued by them.

    You can form your opinion about who you think is “smart”, and I’ll do the same.

  9. 14

    I have a hard time reconciling the majority’s MPF ruling with the recent “software” MPF cases (Blackboard v. Desire2Learn and Aristocrat Tech v. Intl Gaming Tech.).

    In this case, there’s a written description — written words describing the function talking about an empty box in a drawing. In the Blackboard and Aristocrat cases, same thing.

    Yet we get different results. In this case, the “specification need only disclose adequate defining struc-ture to render the bounds of the claim understandable to an ordinary artisan.”

    In Blackboard, “The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the “corresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.”

    Similar result in Aristocrat because no specific algorithm (for a rather trivial function) was disclosed.

  10. 13

    The statistics are meaningless. The inclusion of an M+F independent claim in a claim set is just an alternative claiming strategy that should be considered for all patent applications. As many of us learned, claim sets of broad, medium and narrow/picture claim scope provides clients with good claim coverage for a filing. The M+F in the U.S. is an alternative to a narrow very wordy picturesque claim, but that can be broader so as to include coverage of all of the disclosed embodiments, not just a single embodiment of a picture claim. Its inclusion has to be balanced with its incremental cost and the benefits of its protecting the disclosed structures in the various embodiments for performing the functions in view of the other claims. Inclusion also has value when filing the same claim set in a PCT or foreign application where such claims have a different scope than in the U.S. Unfortunately, many U.S. examiners do not appear to understand how to examine an M+F claim under the MPEP and therefore ignore it until resolution of the other non M+F claims.

  11. 12

    The majority found the following passage formt he specification to disclose sufficient structure for the claimed “monitoring means:”

    “Each node continuously monitors and evaluates the integrity of the multiplexed subrate signals arriving at the node. Illustratively, this could be accomplished by detecting the absence of a carrier signal in an analog signal environment, or the lack of any incoming signal in a digital environ-ment. When node 1 recognizes major line fault 122 in ring 100, controller 118 inserts an error signal onto the six subrate channels. This could illustratively be accomplished by inserting a string of 1’s on each channel in a digital environ-ment. Node 4 performs the identical activity by similarly placing an error signal on the six subrate channels of ring 101.”

    The dissent’s quibble boils down to:

    “The disclosure only associates the monitoring function with the node as a whole. At no point does the specification reveal that the structure within the node that performs the monitoring task is the circuitry of the controller.”

  12. 11

    Max, I infer from your comments that either Germany is unattractive to those Asians and Africans or Germany effectively keeps them out, unless they are world-class soccer players. Is that what you meant to say?

    You are correct that I am not a manufacturer of a stream of new products, or an employer of hundreds of skilled engineers. I have to infer from your making that point right before indicating that you are choosing to disregard what I think that only pay attention to such manufacturers and employers. In this country we say you are free to do that if you want, but that doesn’t make it smart.

  13. 10

    For more years than I care to admit here, I have acted for US corporate clients who are simultaneously both “patent owner” and “infringer” (depending whether I am looking at one of our own patents being infringed, or one that a competitor says we are infringing). I see, ever more clearly, how a properly functioning patents system is a wonderful way to foster innovation and bring to the market new products that enrich everybody’s lives (and how a malfunctioning patent system does the opposite).

    Cowboy, you are surely not a manufacturer of a stream of new products, or an employer of hundreds of skilled engineers. Why should I pay any attention to what you think?

    Europe has Africa on its southern border, and Asia on its eastern border. Tell me, how many people live in Asia and Africa combined? Remarkably, the German national soccer squad has members who originated from 15 different countries of Europe, South America, Africa and Asia (none from the USA or from Antarctica, as far as I know). In its multi-culturality it’s rather like an American sports team, I guess. And Germany’s, with all those immigrants on board, is also good enough to win the World Cup on Sunday in Johannesburg. You lot still buying high-technology German cars, are you? Germany infringing your patents, are they? You think with Mexico you got problems? You ain’t seen nothing yet.

  14. 9

    Also, as to your comment “They (like everybody on this blog) already know that the accused infringer is no more likely the villain of the piece than the plaintiff patent owner.” I don’t agree.

    Yes, there are innocent infringers, but there as also bigheaded types who ain’t gonna be pushed around by no patent-totin’ yokel. They need to get their cumuppence.

  15. 8

    Max, if 5 years from now foreigners are dominating the US patent system, so be it. It will be just the final nail in the coffin. Do you take Americans as immigrants in Europe? Can I illegally sneak across your southern border and be welcomed like happens here?

  16. 7

    Simply put MaxDrei: Yes.

    Patents are a good thing. Patents mean that all of mankind have been enriched by the sharing of knowledge. A patent is a win. The negative attached (monopoly) is at worst for a limited time. What American Cowboy is pointing out (the elephant in the room), is that some judges and justices appear to be anti-patent regardless of what Congress (who have the Constitutionally Appointed Power) have said on the matter. Congress has spoken – business methods are patent eligible. Yet you have those on the bench driven by their philosophies trying to negate the clear and unmistakenable language of the written law.

    Congress has spoken – Inventors Win. Patent Owners Win. Mankind Wins.

  17. 6

    Everybody of intelligence realises, sooner or later, that good patents ought to be enforced speedily and economically, while bad patents ought to be struck down, speedily and economically. Post-issue opposition in the EPO converts bad patents into good ones, economically.

    Speedily? At the EPO? Hum. Work in progress.

    But Stevens and Post probably think they are just doing their conscientious public duty, as well as they can. They (like everybody on this blog) already know that the accused infringer is no more likely the villain of the piece than the plaintiff patent owner.

    And is it not the case that, these days, the USPTO issues more patents to aliens than to Applicants of US nationality. Cowboy, are you sure you want, 5 years on from today, skewing of the law in favour of the patent owner?

  18. 5

    Why is it that some folks, like Judge Prost and Justice Stevens, seem to actively look to restrict patent rights and minimize the value of patents? It seems like on every issue they are on the side that hurts the patentee, regardless of what the final outcome is. Do they think that patentees are a nefarious bunch who must be thwarted whenever possible>

  19. 4

    I was working in the R&D labs of a large telecommunications carrier in the early 90’s. Reading this decision is like stepping back in time — ahh, nostalgia!

    I agree with the majority. There is nothing special about the hardware achitecture of the nodes, the invention lies in what they are configured to do. The PHOSITA would understand (by elimination if not otherwise) which components of the node perform which function.

    This looks like a good decision for patentees relying on MPF claims covering telecoms equipment. As problematic as they can be, MPF claims will often be desirable in this field, alongside other forms of claim, because the implementation options typically consist of a continuum of different, but equivalent, combinations of software, programmable hardware, and dedicated circuits.

  20. 2

    Telcordia’s patent in this case is directed to a double-ring network that is designed to withstand either a line-cut or a failed node.

    Nobody could have predicted that two rings would be more reliable than one.

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