Is the Federal Circuit too Trigger-Happy Invalidating Means Claims?

by Dennis Crouch

Rain Computing has filed an interesting petition to the Supreme Court focusing on indefiniteness and means-plus-function claims. Rain Computing, Inc. v. Samsung Electronics America, Inc., No. 21-170 (Supreme Court 2021).   Rain’s asserted claims require a “user identification module configured to control access of … software application packages.”  The Federal Circuit interpreted “module” as a non-structural nonce word.  As such, the court interpreted the module element a means-plus-function limitation under 35 U.S.C. § 112(f).  The problem though was that the specification did not disclose any corresponding structure “clearly linked” with the claimed function.  As such, the Federal Circuit found the claims invalid as indefinite.

The first question in the petition focuses on the courts trigger-happy approach to invalidating means claims and the interpretive difference between a claim limitation and the claim as a whole.  Although courts often construe individual claim limitations, indefiniteness is generally determined by considering the claim as a whole in light of the specification and the prosecution history and asking whether the claim informs “with reasonable certainty those skilled in the art about the scope of the claim.”  Nautilus.  The idea here is that the Federal Circuit should have asked the broader question — would someone of skill in the art have reasonable certainty as to the claim scope?  Instead, the court did a shortcut and effectively held that the  element-by-element corresponding-structure is a requirement of patentability if means language is used. The petitions also notes the construction provision of 112(f) requiring that “such claim shall be construed to cover the corresponding structure …”  On its face, the provision focuses on construction of the whole claim, not just the means-element.

The second question is directed toward the Federal Circuit’s conclusion that the specification disclosed only a ‘general purpose computer’ when the district court held otherwise.  The petition suggests that change-of-course would require clear-and-convincing evidence before the claim can be invalidated.  The underlying assumption of this argument is that some aspect of interpreting the specification is a question of fact (rather than a question of law).

Whether a patent claim may be invalidated for indefiniteness only if, under 35 U.S.C. § 112, para. 2 (now subsection 112(b)) as construed by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014), the whole claim, “read in light of the specification delineating the patent, and the prosecution history, fail[s] to inform, with reasonable certainty those skilled in the art about the scope of the claim” and 35 U.S.C. § 112(f) (previously 112 para. 6) affects only coverage of a combination claim of which an element is expressed as allowed by the subsection?

Whether the United States Court of Appeals for the Federal Circuit panel in this case erred by invalidating a patent as indefinite without mentioning 35 U.S.C. § 112, para. 2 (now subsection 112(b)) and applying the Nautilus test and by substituting, without clear and convincing evidence, its conclusion of a “general purpose computer” for the district court’s finding of no “general computer”?

[Petition for Writ of Certiorari]

= = = =

I’ll note here that Rain Computing is represented by the Hsuanyeh Law Group, founded by Hsuanyeh Chang.  Dr. Chang is also the listed inventor of the patent here and is CEO of the petitioner Rain Computing.

57 thoughts on “Is the Federal Circuit too Trigger-Happy Invalidating Means Claims?

  1. 6

    Any doctrine resting on some understanding of what a “general purpose” computer may be as firm as one resting on a “general purpose” truck, hat, or pencil. It’s entirely in the eye of the beholder.

    Is a bone-stock Intel CPU located in an automobile no longer a general purpose computer? Is a microcontroller running the control rods a nuclear power plant, but also hosting a web browser for a configuration page now a general purpose computer? The computing device is categorically different the information comprising its useful output, but is categorically unified with the information which enables it.

    The only thing that should matter about output from a computing device for IP purposes is the result of the computing operations. And the only things that should matter about those results is the nature of the utility provided (for eligibility, in enabling machine purposes or human purposes), and the state of the art where the information is being applied (for patentability).

    Until then, just mass randomness in litigation.

    1. 6.1

      Any doctrine resting on some understanding of what a “general purpose” computer may be as firm as one resting on a “general purpose” truck, hat, or pencil. It’s entirely in the eye of the beholder.
      I’ve always wanted an explanation as to what constitutes a “general purpose computer.” I suspect that the people who use that phrase really don’t understand what one is or what makes it “general purpose.”

      1. 6.1.1

        I’ve always it assumed it meant “programmable and capable of processing any input data for any purpose”, as opposed to a “specific purpose computing device” that has been structurally modified or programmed so as to narrow the range of its data input or output capabilities (e.g., a pocket calculator).

        1. 6.1.1.1

          Shall we visit the Grand Hall experiment?

        2. 6.1.1.2

          …Or did you prefer the Big Box of Electrons, Protons, and Neutrons?

          (that meme misses your script recitations)

        3. 6.1.1.3

          That is fairly narrow definition of a “general purpose computer.” Based upon your definition, I would say that most computers are specific purpose computing devices — which they are.

          1. 6.1.1.3.1

            Wandering, “The Poopie Diaper” is trying to include inherency to “general purpose computer.”

            He is trying to say that because a “general purpose computer” could perform any information processing tasks that necessarily a “general purpose computer” anticipates all information processing. That is the level of insanity of the anti-patent judicial activists.

            It would be like saying any reaction could take place in a test tube so a test tube anticipates all chemical reactions. Only people ignorant of science buy into their nonsense and that is why Obama stacked the CAFC with so many non-science people.

            1. 6.1.1.3.1.1

              Exactly right, Night Writer.

              We can add your test tube to Wt’s block of wood and my Bog Box of Electrons, Protons, and Neutrons as ready devices to show the duplicity of Malcolm and his ilk.

              1. 6.1.1.3.1.1.1

                oops … “Bog” => “Big”

  2. 5

    Presumably the patentee would be happy to admit this module was well-known in the prior art and there is nothing about it that is relevant to the novelty or non-obviousness of the claim. In other words, the patentee could admit that they could have (and should have) described their alleged invention in a claim without mentioning this module.

    1. 5.1

      Lol – the old canard of “only claim the point of novelty”

      How precious.

      1. 5.1.1

        +1

  3. 4

    Great analysis Dennis. The point is to maximize the number of pitfalls for inventors and ensure the patent system doesn’t accidently help us compete with vested interests. If inventors are gaming the system by alleging that amorphous claims cover another’s inventions, then 112(a) and (b) offer a robust defense. But keeping claims to within the scope of what we invented is only part of the goal. With decisions like Alice and Williamson the infringers get the added benefit of eliminating competition from legitimate inventors by throwing the baby out with the bathwater.

    1. 4.1

      “The point is to maximize the number of pitfalls for inventors and ensure the patent system doesn’t accidentally help us compete with vested interests.”

      Yup.

  4. 3

    Metallic oxygen first made on earth (long theorized to exist in stars and large planets):

    link to youtube.com

  5. 2

    The first question in the petition focuses on the courts trigger-happy approach to invalidating means claims and the interpretive difference between a claim limitation and the claim as a whole.

    I mean, that’s the first question, but the first argument is really “We don’t like that our module was construed in means-plus when we didn’t use means” and not so much that once you concede means-plus it’s indefinite. They just don’t view that argument as being sufficient to provoke a review, apparently.

    The second question is directed toward the Federal Circuit’s conclusion that the specification disclosed only a ‘general purpose computer’ when the district court held otherwise.

    This is smoke and mirrors. The district court didn’t construe the term in means plus, so this isn’t a real question.

    Look if you want to appeal the Williamson logic, go ahead and appeal the Williamson logic so that you only invoke means-plus when you say “Means for.” That’s at least logical. But turning the question into some sort of misapplication of Nautilus is silly. The statute on its face requires construing the means term as the structure in the specification. When there is no structure there is no reasonable construction possible. There’s a long history of caselaw that a general purpose computer is not sufficient structure for special purpose software functionality, it’s unquestionably correct, and there’s no real assertion that an algorithm was disclosed here. What do you expect to happen?

    1. 2.1

      When there is no structure there is no reasonable construction possible? How many means is there for driving a screw into a piece of wood? I think there are some MFP things that have only one or two really obvious structures. But then, why use MFP language?

      1. 2.1.1

        Along those lines, what is a “screwdriver” but a driver of screws? It is a functional name given to structure. However, there are many, many (and quite varied) structures that could be a screwdriver. Is the term “screwdriver” indefinite because of that?

        My answer to that last question is that while the term itself may be broad, it is hardly indefinite.

        Functional language is not inherently indefinite. However, the problem with functional language is its breadth. If you can show that the prior art also provides that function, then that so-called functional element is known in the art, which makes its subject to being unpatentable under 102 or 103 (depending upon the other elements being claimed).

        1. 2.1.1.1

          “ the problem with functional language is its breadth. If you can show that the prior art also provides that function, then that so-called functional element is known in the art”

          Right. Like a computer that processes data according to instructions. Those are really old.

          1. 2.1.1.1.1

            Right. Like a computer that processes data according to instructions. Those are really old.
            A computer without instructions is a paperweight. Only when those instructions (i.e., specific computer data structures) stored (or otherwise accessible) by the computer are combined with the computer does it become functional.

            It is comparable to the wood block that can be carved into a hundred different inventions (from the future). Until the wood block (or the computer) is acted upon (either by the carving or via the computer instructions), it is nothing but a paperweight.

            ‘What can be’ is not that same as ‘what is.”

            1. 2.1.1.1.1.1

              Wt,

              You are relatively new and may have missed my “Big Box” analogy.

              Instead of a wood block to be carved (a subtractive process), take instead a massive box full of the elementary particles of electrons, protons, and neutrons.

              ANYTHING of physical matter may be constructed out of the contents from my Big Box (additive process).

              Malcolm’s lack of appreciation for computing innovation can thus be translated to the total annihilation of any and every thing (outside of the process category) to which patents may ever be applied to.

        2. 2.1.1.2

          “But my “screwdriver means” provides access to storage devices comprising dynamically updated bitcoin account information which is why my claim must be granted yesterday. Or maybe there is a Federal conspiracy against people like me??? I may get so upset that I will have to pose for a picture of myself and my wealthy bros burning our patents. You have been warned!”

          lol

          1. 2.1.1.2.1

            Malcolm,

            Shall we summon David Stein to once again rip through your old canards on the view of terms sounding in function (and their extensive use OUTSIDE of the computing arts that shows your animus against computing innovation)?

            Oh, what fun we used to have, eh?

          2. 2.1.1.2.2

            Please Pardon Potential rePeat (due to count filter)

            Malcolm,

            Shall we summon David Stein to once again rip through your old canards on the view of terms sounding in function (and their extensive use OUTSIDE of the computing arts that shows your animus against computing innovation)?

            Oh, what fun we used to have, eh?

          3. 2.1.1.2.3

            “But my “screwdriver means” provides access to storage devices comprising dynamically updated bitcoin account information which is why my claim must be granted yesterday.
            Create straw man arguments much?

            Or maybe there is a Federal conspiracy against people like me??? I may get so upset that I will have to pose for a picture of myself and my wealthy bros burning our patents. You have been warned!”
            It is too early in the day to be drinking the hard stuff. You have been warned!

            LOL

        3. 2.1.1.3

          Wt, see the post at 1.2.1.1.2.1

      2. 2.1.2

        How many means is there for driving a screw into a piece of wood?

        Only whatever the specification states. Means-plus doesn’t ask what structures one of skill in the art would know perform the function, it asks you to import the specific structure of the specification into the claim.

    2. 2.2

      The question presented had to be an attack on Nautilus (SCOTUS decision) rather than an attack on Williamson (Fed Cir en banc) if it wanted any chance to be accepted. If the SCOTUS sees that the Fed Cir is not following Nautillus properly, then there would be a much greater chance of cert being granted. My guess is that the SCOTUS likes Williamson because it requires a fact-specific analysis that has lots of room to go in all kinds of different directions rather than being a clean and easy to follow rule.

  6. 1

    I am not really clear on how one could conclude that “this limitation is unclear, but the claim as a whole is sufficiently clear.” If the scope of any single limitation is unclear, how can the scope of the claim as a whole possibly be clear?

    1. 1.1

      If the scope of any single limitation is unclear, how can the scope of the claim as a whole possibly be clear?

      I’m sure you’ll never hear them asking for this logic to be applied to obviousness.

    2. 1.2

      I think that there is some space there, but not a lot.

      1. 1.2.1

        Sure, I suppose that there might exist some hypothetical claim where the claim as a whole might be sufficiently definite even if a single limitation is unclear. You might imagine a circumstance, for example, where the borders of one limitation are fuzzy (could be read one way to include both vacuum tubes and transistors, but could be read another way to exclude vacuum tubes), but where another claim limitation excludes vacuum tubes. In such an instance, the borders of the claim as a whole are sufficiently definite, even though one limitation is ambiguous.

        I do not see how that will help the patentee here, however. The second method step requires “sending, to the user, a user identification module… .” If we do not know the borders of what qualifies as a “user identification module,” how can we possibly know whether a given technology is or is not inside that boundary?

        1. 1.2.1.1

          Here is what doesn’t sit well with me: Under CA FED law, the whole fight is about whether the claim term will be interpreted as MPF under 112(f). If yes, then it is invalid as indefinite; if no, then no indefiniteness problem. How is it that the scope is suddenly clear/unclear?

          1. 1.2.1.1.1

            Re: How is it that the scope is suddenly clear/unclear?
            When held under Williamson to be no different in scope from a literal 112(f) “means”-function claim element, and when the subject claim element has no 112 enablement and the claim should have also been rejected on that basis?

          2. 1.2.1.1.2

            I think it is just hypertechnical formalism. If you recite “means for driving a screw” without mentioning a screwdriver, it is indefinite (even if there is only one possible structure for driving a screw in the real world). If you recite a screwdriver, it is definite (provided the judge hasn’t tried to drive a screw with a hammer). If you mention a “screw-driving implement,” then it is either definite or indefinite depending on the whim of the judge who decides whether “implement” is structural or means-plus-function.

          3. 1.2.1.1.3

            Really interesting point.

            One way to think about it is by starting with the Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928), General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) line of cases, which concluded that where “[t]he language of the claim [] describes th[e] most crucial element in the ‘new’ combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus … a claim with such a description of a product is invalid.” Halliburton, 329 U.S. at 9.

            In response, Congress provided language in 35 U.S.C. § 112 to create a safe harbor exception to Halliburton. See, e.g., In re Donaldson Co., Inc., 16 F.3d 1189, 1194 (Fed. Cir. 1994) (en banc) (“In Halliburton … the Supreme Court held that means-plus-function language could not be employed at the exact point of novelty in a combination claim. Congress enacted paragraph six, originally paragraph three, to statutorily overrule that holding.”)

            Specifically, Congress has mandated that “[a]n 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.” 35 U.S.C. § 112, paragraph 6 (pre-AIA); 35 U.S.C. § 112(f) (post-AIA).

            However, while the saving exception was arguably only needed for “th[e] most crucial element[s] in [a] ‘new’ combination,” Halliburton, 329 U.S. at 9, the exception on its face appears to apply to any element that is “expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” 35 U.S.C. § 112, paragraph 6 (pre-AIA); 35 U.S.C. § 112(f) (post-AIA).

            This is in accord with the Fed. Cir.’s interpretation that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).

            Thus, 112, p. 6 / 112(f) operates by congressional fiat to narrow the scope of any claim element invoking it to “the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, paragraph 6 (pre-AIA); 35 U.S.C. § 112(f) (post-AIA).

            This raises the question of: what is it narrowed to? It is this question that would theoretically not be answerable if the specification does not disclose any “corresponding structure, material, or acts,” 35 U.S.C. § 112, paragraph 6 (pre-AIA); 35 U.S.C. § 112(f) (post-AIA), thus rendering the claim scope indefinite, even though, absent such narrowing through invocation of 112, p. 6 / 112(f), the broader scope may be ascertainable.

            The counter-intuitive result you highlight seems like a potential jumping off point together with Judge Newman’s dissent in Williamson to argue that 112, p. 6 / 112(f) should be interpreted to give an applicant an opportunity to use the term “means for” or “step for” to invoke these saving constructions, but absent that functional language invoking the saving construction the functional language should be interpreted under the traditional case law, sink or swim.

            1. 1.2.1.1.3.1

              Except for the fact that Halliburton being abrogated was not limited to the option of 112(f) for pure functional claiming, that the entirety of 112 provides for words sounding in function (aka the Vast Middle Ground) and that the “issue” more as to do with single means claims as opposed to combination claims (or any attempted resurrection of Point Of Novelty) — as has been pointed out for over a decade now.

    3. 1.3

      This was basically my initial reaction.

      But at least in a 112f context, it’s pretty easily plausible. You can have an insufficiently described element in a limitation which invokes 112f in isolation. But if the remainder of the claim adds structure to that element, it loses its 112f invocation and becomes definite.

      For example: “a means for displaying information; [blah blah blah]; wherein the means for displaying information is a LED computer screen.”

      1. 1.3.1

        Ben, if the spec discloses a “means for displaying information” as an LED computer screen, why does not that enablement disclosure remove the basis for its ambiguity rejection under 112(f) and CAFC case law? It should merely define the claim term’s scope as equivalents of that disclosed enablement without the claim itself having to say so.

        1. 1.3.1.1

          In my hypothetical, there is no such disclosure. The specification doesn’t have to support the embodiment to get rid of the 112b issue. That there would be a 112a issue is a different problem.

          1. 1.3.1.1.1

            Care to explicate why the presence enough of the detail structure removes the 112(f) and 112(b) concerns, but might not address the 112(a) concerns in this hypothetical?

            1. 1.3.1.1.1.1

              As the means is described with sufficient structure to perform the function, it is no longer interpreted as invoking 112f.

              Think “paper cutting means including a table and a blade attached to a swinging arm.” Not 112f.

              If the specification doesn’t actually include the structural details, their recitation resolves the 112b by eliminating the 112f interpretation, but potentially raises a 112a issue.

              1. 1.3.1.1.1.1.1

                Still need more: you are attempting to say “sufficient for 112(b) but not for 112(a).

                I “get” the elimination of 112(f), but that’s not the focus of what I am asking.

                I am looking for how you see — in your hypo — that 112(b) is met, but not 112(a).

                If it helps any, I am trying to envision how your statement would appear in a rejection that would take more than two seconds to overcome (you are nowhere close to providing a prima facie case).

                Thanks

                1. I’m genuinely not understanding you, but I’ll try one more time.

                  The 112(b) issue was solely caused by the 112(f) interpretation and a specification that disclosed no structure.

                  If the claim was amended with structure, the 112(f) interpretation and the 112(b) issue go away. But because that structure was never in the spec, there could now be a 112(a) issue.

                2. You say “disclosed no structure” but that is not a part of your hypo since you state that “structure” of LED computer screen IS provided.

                  Is or is not the LED computer screen provided?

                3. No prob – in the case of your view as only being present by amendment, you have a problem with attempted inclusion of new matter, eh?

        2. 1.3.1.2

          “an LED computer screen”
          Isn’t that a functional limitation. A LED is a “light emitting diode” — in other words, a diode that emits light. Emitting light is a function. Ergo, the phrase LED computer screen is a functional limitation.

          This is why this concept of “functional limitations” being indefinite is a big joke. People give functional names to structures all of the time. I claim “a switch connected to a light and a power source.” Is that indefinite? All of those terms are arguably directed to structure. Then again, all of those terms are arguably directed to functions. How should we evaluate that claim language? Should it be rejected under 112 if an example of a “light” wasn’t provided in the specification?

          1. 1.3.1.2.1

            ““an LED computer screen”
            Isn’t that a functional limitation. A LED is a “light emitting diode” — in other words, a diode that emits light. Emitting light is a function. Ergo, the phrase LED computer screen is a functional limitation.”

            That’s so fun!

            Why don’t you apply your “I pretend like the reference point of OSITA doesn’t exist” to written description next? You’ll conclude that NO patents involving computers are valid because none of them explain how to build a computer from scratch. Yaaaaay. A totally reasonable legal analysis! We should structure our understanding of the law around this!

            1. 1.3.1.2.1.1

              Ben,

              You forgot the “/s” (just as you forgot that many here –hint: Malcolm– actually DO try to apply law as you mockingly suggest here.

            2. 1.3.1.2.1.2

              Why don’t you apply your “I pretend like the reference point of OSITA doesn’t exist” to written description next?
              Talk to the Federal Circuit about their assertion that a module is a ‘nonce’ word. A person of ordinary skill in the art would hardly think that but reasonableness rarely gets in the way (these days) of the Federal Circuit invalidating a patent.

              When one reads Federal Circuit (and CCPA) decisions from the past, you’ll find a lot of them injecting reasonableness into an analysis so as to avoid invalidating a patent based upon what I call ‘traps for the unwary.’ Today’s Federal Circuit is nearly the complete opposite. In the past (and this goes back probably a couple decades), the Federal Circuit would like to find ways not to invalidate a patent. These days, however, the Federal Circuit will go out of their ways to invalidate a patent whenever possible.

              The past Federal Circuit apparently followed the guidance of the US Constitution by construing patent law in a manner that promoted innovation. Today’s Federal Circuit looks to promote infringement by invalidating most of the patents that come before it. My guess is that 90% of the patents that come before the Federal Circuit will have rejections either affirmed or findings of patentability reversed.

              The current Federal Circuit is about as hostile to patents as it has ever been.

              1. 1.3.1.2.1.2.1

                rather mirrors the prior self-description of the US Supreme Court (in an era that prompted Congress to actually wake up and pass the Act of 1952):

                The only valid patent is one that has not yet appeared before us.

    4. 1.4

      Greg asks how a claim, as a whole, can be accepted as “clear” after one particular limitation in the claim has been found to be “unclear”. That question set me thinking.

      At the EPO, we have what we call a “2-part” claim, the two parts being separated by the link words “characterized by” (or “characterized in that”). Ahead of those words we have a recitation of those technical features that are also present in the prior art document “D1” that is the foundation of the obviousness analysis. Following on from the link words, and forming the 2nd part of the 2-part claim, is the feature or features that confer novelty over D1.

      Now suppose the patent application was filed with a 1-part claim and the Examiner finds one of its features (X) less than clear. Re-jigging the claim into a 2-parter could overcome the difficulty, whenever that supposedly unclear feature X is also in D1.

      Conversely, and commonsensically, if unclear X is being relied upon for novelty over D1, that Examiner is going to be even more fierce on the question whether X is clear enough. That’s mainly because the EPC expressly excludes clarity/indefiniteness as a ground on which to dispute validity after issue.

      In the USA, how much does it matter, whether the allegedly unclear limitation is at the point of novelty?

      1. 1.4.1

        Two-part and the equivalent of our Jepson claims**….

        **some have maintained that these are not the same, but I cannot recall ever seeing a cogent explanation of how there is any meaningful difference.

        1. 1.4.1.1

          I have tried to explain the difference between a Jepson and an EPO c-i-t claim but, it seems, not cogently enough to satisfy anon. That Jepsons are all but extinct whereas c-i-t’s are the default at the EPO does though suggest that there is a significant difference between them.

          But does that matter here? All I want to know is whether the degree of definiteness is required to be higher, when it is at the “point of novelty” in a claim.

          1. 1.4.1.1.1

            You are correct MaxDrie in that you have not provided a cogent explanation of the difference between the Europe two-part and the US Jepson claim (in no small part because there is no meaningful difference).

            You falling back to the observation of behavior in different Sovereigns does not add any cognitive explanation.

            As to “point of novelty,” your question is a bit of a misnomer, as the legal requirement applies to the entire claim (claim as a whole).

            I “get” the desire to focus on “point of novelty,” but come MaxDrei, the amount of time you spend on American patent law blogs, you should by now appreciate the impact our Sovereign view has had on this issue (and at least have some small understanding just why the Jepson Claim format IS a dinosaur).

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture