by Dennis Crouch
Functional claim language has long been a mainstay of U.S. patent law. In the historic case of O’Reilly v. Morse, 56 U.S. 62 (1853), the famous inventor of the single-line telegraph (Morse) claimed patent rights to the use of electro-magnetism for transmitting a signal–without limit to any “specific machinery or parts.” Id. The Supreme Court found the claim “too broad and covers too much ground.” Although Morse’s claim directed to a single functionally described element was deemed improper, patent attorneys quickly learned that a combination of functionally-claimed elements could work. An example of this is famously seen in the Wright Brothers early aircraft patents. See US821393.
The Supreme Court pushed-back again on functional claims–perhaps most notably in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946). In Halliburton, the Supreme Court invalidated Walker’s means-plus-function claims as indefinite after holding that it was improper to claim an invention’s “most crucial element … in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.” Id. Halliburton can be read as distinguishing between, on the one hand, claim elements that were already well known in the art, and on the other hand entirely new elements. Well-known functionality will be understood by those skilled in the art as translating to particular machinery or processes. And, the existence of prior art means that the patent doctrines of obviousness and anticipation will limit unduly broad scope. On the other hand, newly invented functionality has the potential of resulting in quite broad scope if divorced from the underlying mechanisms of operation. The Halliburton decision was not a surprise given that the Supreme Court had already repeatedly criticized functional claims. A good example of that criticism is seen in the 1938 General Electric decision where the court complained about the “vice” of functional claim limitations:
But the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.
Gen. Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938).
Halliburton did not stand for long. Rather, the Patent Act of 1952 was expressly designed to overrule Halliburton and revive the use of means-plus-function claims. The new law, now codified in 35 U.S.C. § 112(b) reads as follows:
(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.
Id. You’ll note that the statute does not suggest any difference between well-known or novel elements in their use of means-plus-function language. One key feature of Section 112(f) is its particularly narrow interpretive scope. Means-plus-function elements are not interpreted as extending to the full scope suggested by their broad claim language. Rather, as the statute recites, the scope is “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. Thus, a claim directed toward a “fastening means” appears quite broad on its face as covering all conceivable ways of fastening, but the term would likely be quite narrowly interpreted if the patent specification is also narrowly drafted. If the specification disclosed a “nail” as its only example, the court would likely limit “fastening means” to only include nails and their equivalents. Id. (“structure … described in the specification and equivalents thereof.”).
Invalid as Indefinite: Section 112(f) does not tell a court what to do in cases where the specification lacks disclosure of any “corresponding structure.” The Federal Circuit’s approach is to hold those claims invalid as indefinite under 35 U.S.C. § 112(b). In re Donaldson Co., 16 F.3d 1189 (Fed.Cir.1994) (en banc). Indefiniteness was also the hook used by the Supreme Court in Halliburton, then codified within Rev. Stat. § 4888. I am fairly confident that the Supreme Court would affirm the Donaldson precedent if it ever heard such a case. But, as discussed below, this interpretation leads to some seemingly unjust results.
Structure Plus Function: Because of the narrow construction and indefiniteness concern, patent drafters today largely shy-away from using means-plus-function claim language. Still, functional limitations offer powerful exclusive rights if given their full scope. In the marketplace, consumers ordinarily care more about whether a machine serves its appointed function rather than how it particularly works. A common approach for many skilled patent attorneys is to take advantage of functional limitations while still endeavoring to avoid being categorized as Section 112(f) means-plus-function limitations. This approach is often quite natural as the English language regularly identifies machines and parts by their function: a brake, a processor, a seat. These terms are inherently functional but are also tied to known mechanical structures. I call this approach “structure plus function” and it requires a threshold amount of structure sufficient to ensure that the limitation is not MPF. Structure-plus-function regularly results in broader claims than MPF and claims that that are less likely to be invalidated as indefinite. Again, this is nothing new, and they exact type of language discussed by the Supreme Court in its 1938 GE decision. Still, in recent cases the Federal Circuit has been more aggressively putting claims in the Section 112(f) MPF box. The key case on point is Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).
The MPF rules are particularly pernicious in situations where the claim element at issue is already widely available in various forms. Since it is already widely available, the inventors (and their patent attorneys) typically feel less need to fully describe and specify particular examples of the well-known element. That inventor “feeling” is generally supported by strong precedent that a thin specification is appropriate for elements of the invention already known to the public. This well-known-element situation is also outside of the point-of-novelty policy concerns raised by Halliburtan. So, ordinarily, well known elements need only a thin disclosure within the specification. An off the shelf-component might not receive any structural disclosure at all other than identifying its name and how it connects-in with the rest of the invention. BUT, that all changes if the claim element is interpreted as MPF. If its MPF, the claim scope is limited only to what is disclosed (and equivalents), and a specification without structural disclosure will render the MPF claim invalid as indefinite. Thus, we have two entirely different drafting approaches that will depend greatly on how the claim is interpreted. And, following Williamson there is no longer a strong MPF interpretive presumption based upon the presence/absence of traditional MPF language such as “means for.” What that means practically is that the threshold is high-stakes, but unpredictable.
Recently, the Federal Circuit decided two Section 112(f) cases that push back a bit on Williamson:
- Dyfan, LLC v. Target Corp., — 4th —, 2022 WL 870209 (Fed. Cir. Mar. 24, 2022) (“code”, “application” and “system”); and
- VDPP LLC, v. Vizio, Inc., 2022 WL 885771 (Fed. Cir. Mar. 25, 2022) (non-precedential) (“storage” and “processor”).
None of the claim elements at issue in the cases used the word “means” as a signal of intent. Still, the two district courts interpreted the limitations as written in means-plus-function form. In addition, both district courts concluded that the claims were invalid as indefinite since the specifications lacked disclosure of corresponding structure.
The first step in 112(f) analysis is to determine whether a claim element should be classified as a means-plus-function claim. The most obvious clue is whether the element is written in traditional means-plus-function style–using the word “means” and also including some functional purpose. An element that does not use “means” is presumptively not a means-plus-function claim. However, that presumption is not longer a strong presumption. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). And, the presumption can be overcome by a showing that the claim “fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. (internal quotation marks removed). In addition, “nonce words” are seen as effectively using the word “means.” Id. Taking all this together, we know that Williamson is a quite important decision. It (1) moved away from a strong presumption against MPF interpretation absent “means” language and (2) established the “nonce word” doctrine. Not surprisingly, the case is the most-cited Federal Circuit decision of 2015. Still, some members of the court appear to see Williamson as potentially going too far, and that can be seen in the Dyfan and VDPP decisions by Judges Lourie (in both); Dyk, Stoll, Newman, and Taranto.
Claim Construction: The question of whether a claim element is in means-plus-function form is part of claim construction. It is thus the role of the court (rather than a jury) to decide and is ordinarily seen as a question of law with de novo review on appeal. One exception to this is comes when a party presents evidence leading to underlying factual conclusions. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015). Those factual conclusions are given deference on appeal. Id. In some cases, the factual conclusions may conceivably so intertwine with the legal conclusions that the ultimate claim construction should also be treated as a mixed-question of law and fact and thus given deference on appeal. (This last sentence should be seen as my speculation on the correct rule rather than black-letter caselaw.)
In most situations, claim construction is purely a question of law and comes-in most commonly when the parties are endeavoring to show the level of understanding of a person of skill in the art (POSA). For MPF interpretation, this type of expert factual evidence appears to be more common than ordinary claim construction as the parties endeavor to show that a particular claim element would be understood as connoting “structure.” See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018).
Dyfan’s patents are directed to location-based triggers in mobile phones. Coincidentally, I used my idea of this technology in my internet law course recently in our discussion of privacy law–imagining Ads pop-ups based upon a user’s particular micro-location. In our example here, imagine that as you walk near the vacuum cleaner aisle of Target, your phone receives a “targeted” vacuum cleaner advert or coupon.
The Dyfan claim is directed to a “system” and requires “code” to cause a mobile device to output “visual information” based upon “location-relevant information.” The claim’s “wherein” clause requires certain timing of the outputs (automatic output of visual information after receiving a communication receipt but without requiring a separate “first message”). The wherein clause ties itself to the “system” (“wherein the system is configured…”) and does not state if the action is also done by the code. Thus, the courts identified this clause as the “system” element.
The district court found these two claimed elements to lack “structure” and therefore interpreted them as MPF elements. At step two, district court examined the disclosure documents found no corresponding structure within the specification. The result then is that the Code and System elements were un-construable and the entire claim invalid as indefinite.
On appeal, the Federal Circuit reversed and remanded–holding that the district court had improperly shifted the burden to the patentee to prove that the elements were not MPF. This presumption of no-MPF exists because the claims did not use the term “means.” In its decision, the appellate court began in an odd way by stating that overcoming the presumption requires “a preponderance of the evidence.” I call this ‘odd’ because preponderance of the evidence is the standard used for questions of fact rather than questions of law. As I mentioned, claim construction has been repeatedly deemed a question of law except for limited circumstances. Here though, there was expert testimony that those skilled in the art would understand “code” to be a particular term of art that encompasses a computer program, and that “off-the-shelf-software” was available to perform the specific function claimed. On appeal, the Federal Circuit began with a presumption that the code was not-MPF, and that presumption was further solidified by the unrebutted testimony indicating structure. As part of this, the appellate panel also rejected the notion that the code limitation was “purely functional.”
The system limitation is a bit more complicated — certainly the “system” has structure. The claim actually requires that the system include a physical building. But, the claim also requires that the system be “configured such that” messages are sent in a particular order and based upon particular triggers. “A system comprising . . . wherein the system is configured such that . . . .” Section 112 speaks in terms of an “element”, and the court was faced with the question of whether (1) the system itself is the element, or instead (2) the element is the sub-part of the system that performs the claimed function. On appeal, the Federal Circuit did not decide this question, but instead held that the claims provide sufficient structure either way. The court particularly noted that the aforementioned ‘code’ is part of the system and it it is pretty clear that the code would be doing the work here as well.
Although the wherein clause does not expressly refer to the previously recited “code,” it references specific functions that are defined or introduced in the code limitations and thus demonstrates that it is the code that performs the function recited in the wherein clause.
Slip Op. Since these claim elements included sufficient structure, the appellate panel concluded that they were not written in means-plus-function form. And, as a consequence the indefiniteness ruling
VDPP is non-precedential, but reaches the same results. And, although decided only one-day after Dyfan, it favorably cites that decision and particularly the shifting of burdens and evidentiary requirements. VDPP’s patents relate to technology for blending 2-D video streams so that they appear 3-D. US9699444B2 claim 1 is directed to “an apparatus” having two elements: (1) a storage and (2) a processor. The storage is “adapted to store one or more frames.” The processor has a number of claimed functions, including obtaining and expanding an image; creating a ‘bridge frame’ that is a “non-solid color”; and blending various frames for display. The patent has a 2001 priority date, and the claims here have shifted substantially to capture market development.
The C.D.Cal. district court determined that VDPP’s claimed “processor” and “storage” elements were both subject to § 112(f) since they “do not describe how to carry out the recited functions—only that they do” somehow accomplish those functions. That statement appears almost lifted from Halliburton’s definition of means-plus-function claiming. In another pithy restatement of its conclusions, the district court also identified each term as a “black box for performance of a function.” On appeal the Federal Circuit reversed–holding that the “processor” and “storage” elements contained sufficient structure.
In the case, the district court “summarily concluded that the limitations [were] subject to § 112(f).” On appeal, the Federal Circuit found that erroneous because claims without the “means” term are presumed to not be MPF. This issue here seems to get to the heart of the nonce-word debate. My understanding of ‘nonce words’ is that they are presumed to be MPF triggers. Thus, the district court’s opinion appears to be based on its conclusion that the processor and storage are “nothing more than
nonce words.” On appeal, however, the Federal Circuit took a different path. Rather than starting with the nonce work question, the court began with the presumption of no-MPF absent the word “means.” The court then quoted Dyfan’s statement that overcoming the presumption requires evidence.
Vizio was required to provide at least some evidence that a person of ordinary skill
would not have understood the limitations to ‘recite sufficiently definite structure[s].’
Slip Op. (quoting Dyfan). The district court had avoided this presumption by identifying the terms as nonce words. That approach was apparently wrong: “The court pointed to no such evidence from Vizio, instead summarily concluding that the limitations are subject to § 112(f). . . That is insufficient to overcome the presumption
against application of § 112(f).” Perhaps the best way to reconcile the developed doctrine here is that a district court should not identify a word as a ‘nonce’ word based upon reasoning alone. Rather, that determination requires some sort of evidence. In VDPP, the court again referred back to Dyfan and shows district courts how to cite the case:
Vizio’s arguments are particularly unpersuasive in view of our holding in Dyfan. In Dyfan, the district court determined that the limitations “code” and “application” were subject to 112(f).
We reversed the district court’s construction of those terms (among others), explaining that the court did not give effect to the presumption against § 112(f). More specifically, we held that the defendant failed to show “that persons of ordinary skill in the art would not have understood the ‘code’/‘application’ limitations to connote structure in light of the claim as a whole.” That same rationale applies here. As explained above, the court ignored that it was Vizio’s burden to rebut the presumption against § 112(f), and Vizio failed to meet that burden.
Slip Op. I’ll just note that this type of talk of ‘presumption’ and presumably external ‘evidence’ is radically different from how the court usually discusses claim construction. Rather, claim construction is a question of law where we are searching for the proper construction. Typically neither party has a burden of proving a question of law.
In VDPP, the district court also pointed to evidence presented that the storage and processor are known structural forms. The patentee had fallen into the pernicious trap noted above by explaining in the specification that that “processors” and “storage” are “well-known” in the art. Here, the court concluded that the specification statement that these are “well known” provides good evidence that the terms were not intended as MPF (without further elaboration or explanation of the reasoning here).
The one problem with the court’s analysis in VDPP is that it implicitly concludes that the “processor” counts as the “element” for MPF analysis. But, the claim is directed to a particular function, not simply a “processor for processing.” Here, for instance, the claim requires “a processor adapted to: obtain a first image frame from a
first video stream; ….” Although a general processor may be well known, a processor “adapted” as claimed was not well known in the art, and the question that the court needs to ask with regard to structure is whether the claim itself provides the structure for performing the recited function.
As you can see, this area is ripe with historical confusion, statutory bright lines, and shifting precedent. I expect that the court will continue to develop precedent, but I expect that this pair of cases will begin to tone-down the impact of Williamson while also shifting litigation tactics.
Look, I’ve seen so much smoke being blow out of peoples’ b*tts to try and obfuscate an issue to weaken patent rights since Alice.
This trivial easy. Interpret the claims as one skilled in the art would interpret the claims at the time of the invention. What happens? Not functional.
What a shxt show.
Just repeating this. All of this is made up nonsense.
The claims should be read in view of a person skilled in the art in view of the specification.
With that reading there is almost never a claim term that goes to be purely “functional”.
How do we know this is all made up nonsense?
Because people like me work with real engineers and some of the best in the world. I read their technical papers and their technical specifications that they use internally. Guess what? Those same functional terms are used because everyone knows what they mean. They know all the different ways the function can be implemented.
Just total BS that is there to weaken patents and again is based on nonsense.
You can also tell this is all made-up nonsense because the counter arguments all do the same thing. They all ignore how a person skilled in the art or of ordinary skill would view the claim term.
I actually had a conversation about this recently with an engineer with a Ph.D. in physics from a top university. He had figured this all out himself about the functional claiming and said exactly what I say
Absolutely.
With that in mind, how is one to take MaxDrie’s post at 17?
What (exactly) is he referencing with “egregious mischief?”
Is he aiming at innovators who may — or may not — use the optional “means plus” indication for purely functional claiming?
Or do you think that his aim aligns with your (and my) aim?
I don’t know anon. I know that this “functional” claiming and “full scope” shxt is as bad as the Alice 101 shxt. Just f’ing insane stuff.
Well, Night, anon, I’m not convinced that all this “functional” stuff is nonsense. Under the EPC, for example, it is well-established law that claiming in terms of function can be objectionable. But the objection is made under Article 84, EPC, which is the Section that addresses clarity of the claim and the degree to which the specification supports the full scope of the claim. Below a Link to a paragraph of the EPO’s MPEP that is on point.
anon, you over-complicate my position which is, simply, that the case law in the USA would be more accessible to all those who are not professional patent litigators if 112(f) were to be excised from the patent statute. No other jurisdiction boasts such a statutory provision, and I think that no other jurisdiction can rival the USA for the complexity of its case law on patent claim validity. No coincidence, I suspect.
link to epo.org
Overcomplicate your position…?
Your “position” remains unclear vis a vis what US law IS
The only clarity from you is your usual shilling for EPO Uber Alles.
hmmm – performing A function without inventive skill…
link to epo.org
In other words – the singular element or function — in and of itself — is NOT the ‘invention’ per se.
Is that a correct translation?
(this may be even broader reach than the US Sovereign has chosen)
Well, anon, you are going to get irritated with me again, I fear, when I say that I can understand what I read when I click on your Link but cannot understand anything of your March 5 post above. BTW, what you link to in the EPO Guidelines itself contains a link to the Guidelenes paragraph which I sent you to, originally.
So, the short answer to your question to me “Is that a correct translation” has to be….No.
How about the well-established allowability at the EPO of the “use claim” as in:
“Use of (known) molecule A for the treatment of disease X”?
Your “how about” takes things in an entirely different direction.
I am talking about a mere element of a claim (obviously then, the whole claim being one in combination of several elements), in which one of the elements is providing in terms of ‘providing a function’ (that is, that element is a purely functional term), AND that element has known ways OF providing that function.
The invention being then not the single element in and of itself.
This is not about your newly introduced “new use of a known item” — which roughly parallels our Sovereign’s change in the Act of 1952 of 35 USC 100(b) vis a vis process.
And yes, I am aware that the section I provide is cross-linked to the section you provide — that’s how I found the section that I provided and why I am seeking to understand both sections.
Let’s then try to understand each other better, by using concrete examples. Put out of your mind for a moment the prior art chariot of Boadicea, Queen of the Iceni. Then, suppose we have at the EPO a claim in the default EPO 2-part c-i-t form. Suppose that the second half of the claim to a wheeled vehicle reads “characterized by a cutting means carried by the axle, outboard of the wheels”. Is this the sort of M+F claim you have in mind and are curious about? If it is, we can then discuss further whether or not the EPO Guidelines condemn it as unpatentable.
If it is not the sort of claim you have in mind, can you provide an example of one that is?
“you over-complicate my position which is, simply, ”
I chuckle as YOU reach back in history to set a “simple” hypo?
that chiding aside, to be fully in accord with US practice, amend your pure functional element from “cutting means” to “means for cutting” (as a direct use of 112(f) AND also have a separate claim putatively not selecting to use 112(f) with a parallel Vast Middle Ground element sounding in function.
Then repeat the above for a set of method claims (reflecting ‘step for’ instead of ‘means for’).
i.e.
means for cutting
cutting element, wherein [semi-structure]
step for cutting
cutting, with a cutting element, wherein [semi-structure]
So you really did not want to engage in an on point conversation, eh?
Big +1 NW. Says it all.
“ I actually had a conversation about this recently with an engineer with a Ph.D. in physics from a top university. He had figured this all out himself about the functional claiming and said exactly what I say”
Dennis, where did you find this mental case and why do you love him so much?
Beyond banal.
Wow! Dennis loves me?! Best news I’ve had in a long while.
I would have guessed that he was at best neutral towards me.
I wouldn’t get too excited, as that phrasing is merely and offshoot of Malcolm’s “One-bucket” mentality.
To Malcolm, anything not totally in agreement with his feelings is simply in one “other” bucket.
That Crouch deigns to permit any such things “must” mean (to Malcolm) that a conscience decision to allow somehow must defy reason and only come to be through some odd twisted sense of “love” for the offensive thing.
Given that i) 112(f) is a statutory provision found only in the patent statute of the USA and nowhere else and ii) has revealed itself by now to be a much more egregious mischief than that which it was supposed to curb, what are the chances that the Congress will strike it out, upon its next well-meaning visit to the words of the statute?
BTW, the Dyfan patents in that suit are Patent Nos. 9,973,899 and 10,194,292 [the latter being a continuation of the former] per the D.C. decision. Note that this Dyfan, LLC v. Target Corp., (Fed. Cir. Mar. 24, 2022) decision is not on the merits, just a remand back to J. Albright in Waco WDTX, just on 102(f) claim interpretation, and the subject matter may be of general interest? Namely, location-related-information on your smartphone? [I did not look at either the spec or the claims.]
When I read proud boasts here, that I haven’t written a M+F claim these past 20 years, I wonder about the gulf that seems to exist between those who write claims inside the USA and those who write them somewhere else in the world. Outside the USA, a nice M+F claim gets you broader better protection than anything else. In these days of FtF, rivals filing within days of each other, and strict WD (prohibition on adding matter), safe solid, internationally effective claim drafting, from the get go, in the priority document, matters more than ever.
Global corporations are increasingly getting their drafting done somewhere other than inside the USA. This strikes me as a challenge for such corporations to manage. Anybody here disagree?
I write MPF claims for some jurisdictions including China.
The reality is that MPF claims are of very limited use for EE/CS/Mechanical applications. And usually clients want to stay within 20/3 claims. So, MPF loses out.
I did have a client that had me write MPF claims for every application. But they do a lot of litigation.
Night, thanks for that comment, but what I was hoping for was a comment from somebody here, to the effect that even when you draft for the USA you include in the specification a statement of invention in commonsense easy-read M+F format, ready to fish out of the specification for use as claim 1 of your upcoming, to be filed one year later PCT application. This, so that your optimal claim, everywhere outside the USA, gets credit for the priority date of the US pro filed one year earlier than your PCT filing.
For otherwise, it might very well not.
Which I suspect is (ultimately) what drove Dennis to write this piece.
Max,
Yes I have a client for which I do exactly that so the Chinese claims can be just pulled out of the specification. It is a huge client and many do this.
Interestingly, some patent offices fight those claim like portions of specifications.
That is indeed interesting, Night. May I ask, which Patent Offices do you have in mind, and what objection do they raise to such statements of invention in the specification?
Actually, I’ve had objections at the EPO and in CN.
I actually have had several examiners at the PTO object to them as well. But I overcame all of these.
I’ve amended the spec at the EPO and in CN.
Thanks. At the EPO, they are implacably strict in requiring 100% “conformity” between what the claim defines as the invention and what the specification states the invention to be. Thus, any statement of invention that is not a repeat of the allowable independent claim text will attract objection. But if the statement of invention says the same thing as the claim, the EPO has no objection. On the contrary, it requires the presence of such a statement of invention
Is that what you mean by “fight”?
Not to put words in his mouth, but it appears that you are falling into the Ipsis Verbis trap for the unwary.
You are aware (are you not) that MOST ALL US applications inoculate against US Examiner “pulling things out of the most odd places” by including statements in the as-filed application that BROADLY enable the ability to “pick and choose” “what the invention is” for claim amendments during prosecution (your own rather myopic EPO Uber Alles “statement of the invention” being a form of Patent Profanity…).
Wandering >This is a manufactured controversy whose goal to to further weaken patent rights. The more claim language that can be characterized as a MPF, the weaker that claim language is. If one is to reject MPF claim language, it should be for enablement — not for indefiniteness.
Dennis’s post should be deleted and replaced with Wandering’s words.
It is exactly what is going on!! And it is led by that judicial activist Taranto and his bestie Lemley.
“And it is led by that judicial activist Taranto and his bestie Lemley.”
And is Judge Albright a conspirator or a dupe?
Cute.
Ben, oh he who never misses a cheap shot, did I say that Taranto and Lemley were conspirators? Or did you make that up?
It’s almost comical how lame Ben is.
Just repeating this. All of this is made up nonsense.
The claims should be read in view of a person skilled in the art in view of the specification.
With that reading there is almost never a claim term that goes to be purely “functional”.
How do we know this is all made up nonsense?
Because people like me work with real engineers and some of the best in the world. I read their technical papers and their technical specifications that they use internally. Guess what? Those same functional terms are used because everyone knows what they mean. They know all the different ways the function can be implemented.
Just total BS that is there to weaken patents and again is based on nonsense.
You can also tell this is all made-up nonsense because the counter arguments all do the same thing. They all ignore how a person skilled in the art or of ordinary skill would view the claim term.
I actually had a conversation about this recently with an engineer with a Ph.D. in physics from a top university. He had figured this all out himself about the functional claiming and said exactly what I say.
“Although a general processor may be well known, a processor ‘adapted’ as claimed was not well known in the art, and the question that the court needs to ask with regard to structure is whether the claim itself provides the structure for performing the recited function.”
If this is a general purpose computer, the “structure” is an algorithm:
That was the point made by this court in WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 [51 USPQ2d 1385] (Fed. Cir. 1999). In that case, the court criticized the district court, which had determined that the structure disclosed in the specification to perform the claimed function was “an algorithm executed by a computer.” The district court erred, this court held, “by failing to limit the claim to the algorithm disclosed in the specification.” Id. at 1348. The rationale for that decision is equally applicable here: a general purpose computer programmed to carry out a particular algorithm creates a “new machine” because a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” Id., quoting In re Alappat, 33 F.3d 1526, 1545 [31 USPQ2d 1545] (Fed. Cir. 1994). The instructions of the
software program in effect “create a special purpose machine for carrying out the particular algorithm.” WMS Gaming, 184 F.3d at 1348. Thus, in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” Id. at 1349.
In a later case, this court made the same point, stating that a “computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.” Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 [75 USPQ2d 1705] (Fed. Cir. 2005). The court in that case characterized the rule of WMS Gaming as follows: “[T]he corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” 417 F.3d at 1249.
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 86 USPQ2d 1235 (Fed. Cir. 2008)
Many more citations if you want them.
In regards to those that may claim that In re Alappat was over-ruled by Alice, this is not so, as Alice was silent on that point, and the first CAFC panel after Alice re-affirmed In re Alappat (and there has been no panel decision overturning that first case re-affirmance).
Mind you, the CAFC (learning its lesson from the Supremes) has gone ahead and created a Gordian Knot of conflicting mess of eligibility jurisprudence (tied to In re Alappat).
This approach is often quite natural as the English language regularly identifies machines and parts by their function: a brake, a processor, a seat. These terms are inherently functional but are also tied to known mechanical structures.
This is very accurate and mimics what I have been saying for a long time. However, these known mechanical structures can vary significantly. For example, there are thousands or tens of thousands of variations of a brake — and that may be an understatement. I just did a search of issued US patents with the term “brake” in it. It came up with 21584 hits.
Whether a term is “indefinite” or not reflects the desire that one skilled in the art should be able to read the claims and known whether or not they are infringing. Language isn’t necessarily indefinite because it is broad and covers lots of potential species that fall within that definition. Otherwise, terms such as “brake” would be indefinite.
I haven’t written a MPF claim in 20 years and for good reason — they unnecessarily limit the scope of a claimed invention, which is why defendants want claim terms to be interpreted as MPF.
Imagine if functional terms such a brake, light, radiator, distributor were interpreted as MPF. Specifications would run 100s, 1000s of pages long to ensure that there was sufficient structure disclosed in order to cover every possible variation. Who could afford to do that?
This is a manufactured controversy whose goal to to further weaken patent rights. The more claim language that can be characterized as a MPF, the weaker that claim language is. If one is to reject MPF claim language, it should be for enablement — not for indefiniteness.
Wt,
I was hoping that you would join, seeing as it appears that it was a prior comment from you that initiated this thread.
“Imagine if functional terms such a brake, light, radiator, distributor were interpreted as MPF. Specifications would run 100s, 1000s of pages long to ensure that there was sufficient structure disclosed in order to cover every possible variation.”
But some will claim that ALL of those must be mince words or such, since no “objective physical structure” is explicitly provided.
They would be wrong — and have been wrong, but that won’t stop them (prime example being Malcolm, who for how long? — 17 years now — has been peddling his MISinformation and feelings).
“Who could afford to do that?”
I would posit that “cost” is not even the top concern.
Look at some Random’s posts on his fallacious “gun/bow” projectile “two-rung Ladder of Abstraction” nonsense.
Even if cost were no object, the chance of missing out on some variant may well doom the claim (under Random’s rubric) for some other “reasoning.”
“This is a manufactured controversy whose goal to to further weaken patent rights.”
Absolutely — and it also affects far more then merely computing arts (which is what typically invites the Anti’s to weigh in).
“I haven’t written a MPF claim in 20 years and for good reason — they unnecessarily limit the scope of a claimed invention, which is why defendants want claim terms to be interpreted as MPF.”
This is borderline malpractice. MPF narrows the scope, but in a way that may save the validity (just like dependent claims narrow the scope, but you include them because they may save validity). Imagine if I would write “I havent written a dependent claim in 20 years– they just narrow claim scope.”
Best practice is to include some MPF claims. go ask amgen (who lost some very valuable patents in amgen v sanofi that would have been saved had they used MPF).
Who told you that?
You clearly do not practice in this space. You should avoid handing out “Best Practice” tidbits on things that you just do not know.
FN filters…
Your comment is awaiting moderation.
March 31, 2022 at 2:35 pm
Who told you that?
You clearly do not practice in this space. You should avoid handing out “Best Practice” tidbits on things that you just do not know.
“Who told you that?”
Steven Katz, Partner at Fish, specializing in software and computer technology litigation.
link to fr.com
“Do’s And Don’ts For Claim Drafting: A Litigator’s Perspective . . .”
2. Take Advantage of Different Claim Types
3. Use “Means Plus Function” Terms
Right up there with such amazing advise as “consider how infringement will be proven;””use dependent claims wisely;” and “align patent strategies with business goals.”
This is literally first year associate claim drafting stuff.
A litigator’s perspective….
[chuckles as you make my point for me]
Your point? He just sl apped you Big Willy Style. Chuckles all right.
As usual, you have over 1/3 of the total comments on this thread, yet not a single useful, interesting, or even mildly entertaining one among them.
Just 360 degree aggression, also as usual.
Well Marty, having hit an artificial restraint on posting (Count Filter), I had an opportunity to have this particular thread crawled, and while I certainly was active at the time of your post, that is about the only thing you came even remotely close to.
Let’s dissect your nonsense, shall we?
In reverse order:
Point 3: “Just 360 degree aggression, also as usual.”
Of the 28 posts at the time of your comment, 13 were items in an engaged conversation (with 14 total conversations with 9 different commentators, and one stand alone post by me.
Of those 14 engaged conversations, a full NINE of them can be classified as positive in tone (the opposite of your characterization). The remaining five I would classify as neutral (seeing as I am a firm believer in John Maynard Keynes view of the use of sharpness) – but I could see you attempting to classify as “aggression,” given your notoriously thin-skinned view of anything that is not in agreement with your fantasies.
So even indulging your thin-skinned feelings, that was less than “[180] degree aggression.”
Point 2: “As usual, you have over 1/3 of the total comments on this thread, yet not a single useful, interesting, or even mildly entertaining one among them.”
You are of course entirely wr0ng on this point. MOST EVERY post of mine is at least one of useful, interesting and entertaining.
Let’s chalk this egregious error up to your penchant desire NOT to understand the terrain of patent law.
Point 1: “Your point? He just sl apped you Big Willy Style. Chuckles all right.”
Another error, but a less egregious one. You simply miss the ongoing conversation (and not just with m4 – but also with SS) that a basis in litigation mode carries with it a propensity to NOT understand the Congressional intent in its writing of patent laws, so as to PROVIDE protection to innovators choosing to partake in the patent system.
Your own KNOWN bias clouds your ability in this aspect as well, as you have openly admitted to your own “[being] s lapped [_] Big Willy Style” in view of interactions with others having patents.
But you be you, Marty, and take glory in the view of yours from your Peak of Mount
S
T
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Yea whatever Captain Queeg
Res ipsa loquitur
Keep on being you – it’s almost adorable.
Let me hold Marty’s hand a bit:
He thinks himself (falsely) to be some wondrous intellect, and me to be some “Captain Queeg” (putatively placing himself as being the one accusing another of being “Old Yellowstain”).
As somehow The Caine Mutiny had escaped my reading list in my vociferous youth, it is but with a quick read of a summary that it is noted that the person making the accusation of Queeg to be “Old Yellowstain” is seen to be – at the end of the day – the one that earns that moniker.
My role then is more akin to Greenwald, as I am the one throwing Marty’s inanities back into his own face. There is no (and never has been any) cowardice in my posts. Quite on the other hand, Marty has consistently demonstrated a cowardice of actually learning the terrain upon which he would ‘do battle’ (I suppose, as a means to keep his fantasies alive).
Inanities continually perpetrated because Marty has fallen in love with his own visage – his fantasies about how “patent law should be,” while continuing to void learning about the actual terrain.
We be Jammin.
It’s a fine line between bul lying and having some fun with your patterns anon, but the reference to Captain Queeg has nothing to do with a lack of courage.
It’s telling that you would land on courage or a lack of it as the central theme of that story. It isn’t. It’s about a certain kind of personality. There is a name for it.
-Doubting the commitment, loyalty, or trustworthiness of others, believing others are exploiting or deceiving them.
-Are reluctant to confide in others or reveal personal information because they are afraid the information will be used against them.
-Are unforgiving and hold grudges.
-Are hypersensitive and take criticism poorly.
-Read hidden meanings in the innocent remarks or casual looks of others.
-Perceive attacks on their character that are not apparent to others; they generally react with anger and are quick to retaliate.
-Are generally cold and distant in their relationships with others, and might become controlling and jealous to avoid being betrayed.
-Cannot see their role in problems or conflicts, believing they are always right.
-Have difficulty relaxing.
-Are hostile, stubborn, and argumentative.
-Tend to develop negative stereotypes of others, especially those from different cultural groups (efficient infringers especially!)
PS a fixation on how patent law “should be”? An inflated self-esteem? You as the hero? Hmmmm It’s all projection, all the way down.
Meh – your version is merely your own projections.
As I noted, I had not read the original, and instead merely read the summary — and the points I used are directly in that summary.
The rest of your reply — with particular characteristics in bullet points — do NOT apply to me.
It is beyond odd that you would deign to think that such do.
I would recommend that you do not endeavor to become a psychologist, as it is clearly not your thing.
This is borderline malpractice. MPF narrows the scope, but in a way that may save the validity (just like dependent claims narrow the scope, but you include them because they may save validity).
LOL. I don’t work in biotech — never plan on it. If there is a place of MPF claims in biotech, then so be it. However, everywhere else, MPF claims are next to useless.
Imagine if I would write “I havent written a dependent claim in 20 years– they just narrow claim scope.
Nice strawman. Well-written dependent always have a use. By definition, an MPF claim is limited to “the corresponding structure, material, or acts described in the specification and equivalents thereof.” Unless “equivalents” is broadly construed, you are limited to what is in the specification. For anybody working in the mechanical/computer/electrical arts, there are almost always hundreds, thousands, tens of thousands of possible variations for any particular claim element. There is no way to put them all in a specification.
A MPF claim is essentially an invitation to have your claims designed around. This is why defendants want things construed as MPF. Again, I make no representation as to the value of MPF claims in biotech applications.
>This is a manufactured controversy whose goal to to further weaken patent rights. The more claim language that can be characterized as a MPF, the weaker that claim language is. If one is to reject MPF claim language, it should be for enablement — not for indefiniteness.
Exactly what is going on!! And it is led by that judicial activist Taranto and his bestie Lemley.
“I haven’t written a MPF claim in 20 years and for good reason — they unnecessarily limit the scope of a claimed invention, which is why defendants want claim terms to be interpreted as MPF.”
This is exactly why Williamson is warranted and illustrates the problem Williamson addresses – Applicants are attempting to claim every possible implementation of a function.
“Imagine if functional terms such a brake, light, radiator, distributor were interpreted as MPF. Specifications would run 100s, 1000s of pages long to ensure that there was sufficient structure disclosed in order to cover every possible variation. Who could afford to do that?”
So what? Applicants are limited to what they actually invented, not what they want a monopoly on.
>This is exactly why Williamson is warranted and illustrates the problem Williamson addresses – Applicants are attempting to claim every possible implementation of a function.
And which of the implementations of the functions should not be included? Then the design around infringement is just the implementation that is not included.
And, what? So you think that an implementation of a function that is enabled for a person of skill in the art should not be included why?
“And which of the implementations of the functions should not be included?”
The ones that the Applicant didn’t actually invent. You don’t get a monopoly on every possible implementation of a function because you want one. That’s akin to claiming an idea, which runs afoul of Section 101.
“Then the design around infringement is just the implementation that is not included.”
So what? That’s the public notice function of patents in action.
“And, what? So you think that an implementation of a function that is enabled for a person of skill in the art should not be included why?”
A situation where alternative implementations of a claimed function are sufficiently simple that disclosure of one implementation, by itself, enables another is likely one where the limitation recites sufficient structure for claiming the function and isn’t probably isn’t means-plus-function.
SS, >>>The ones that the Applicant didn’t actually invent. You don’t get a monopoly on every possible implementation of a function because you want one. That’s akin to claiming an idea, which runs afoul of Section 101.
This is not what the law is right now. Your invention is another part of the statute 102/103. And your invention is a combination of element. The elements that are well-known that are included in the combination should include all known embodiments–of course.
So, you logic is that if you have a new combination for a door that you should only get some hinges but other hinges should remain open so that your claim can easily be infringed.
“ So, you logic is that if you have a new combination for a door that you should only get some hinges but other hinges should remain open so that your claim can easily be infringed. ”
This is the opposite of what is happening right now. Dyfan and VDPP both involved apparatus claims where generic placeholders (code and processor) were attached to lengthy functions, and there was no other structure in the claim.
When this happens, proof of infringement is that the function is performed, and nothing else.
I view this is a problem, because the statute makes clear that apparatus claims that recite functional limitations are limited to only the implementations of those functions that the Applicant disclosed, and the Applicant never actually disclosed those functions.
The infringer would have to infringe each and every element SS.
And you keep reducing claims to a single function. Claims are the combination of those functions and the infringer would have to perform each and every one of those functions.
I think that scope of enablement is the only scope that makes sense. Plus, the idea with scope of enablement is that if the function is performed in a novel non-obvious way that is different than what was known at the time of the invention, then the claims are invalid.
It is really a beautiful way to do it as it is easy to understand. Easy to police.
Those methods and how these information processing methods work can be profoundly complicated and inventive.
And don’t forget that information processing takes time, energy, and space.
Applicants are attempting to claim every possible implementation of a function.
My several element claim includes the element of a “light,” which is indistinguishable in meaning from a “means for providing light.” Am I attempting to claim every possible implementation of a “light”? Actually, no. I’m claiming the well-known function of a light in conjunction with other elements — the combination of which, as a whole, is not obvious in view of the prior art.
One having skill in the art would certain know whether or night they are employing a “light” as part of my claimed combination. Or is it your position that a functional term, such as “light,” is inherently indefinite?
Your comment implies that all the claim does is recite the function and nothing else. However, those claims are very, very rare. So much so that I cannot recall coming across one in 25+ years of practicing. Moreover, the proper way to rejection such a claim, as in O’Reilly v. Morse, is for lack of enablement — not indefiniteness.
So what? Applicants are limited to what they actually invented, not what they want a monopoly on.
So you believe that patent applications should be traps for the unwary. Miss disclosing an obvious variation of one of the known elements that you’ve claimed, and you’ve opened up your invention to be designed around. Sounds fair to me — if I happen to be an infringer.
The patent system is supposed to be accessible to everybody — not just those who can afford to draft 100, 200, 500, 1000 page specifications that contain laundry lists of variations of known elements. This is where the infringers of the world want to take patent law. They want to make the disclosure requirements so onerous that none but the very rich can afford to obtain enforceable patents.
If you followed the CCPA and Fed Cir case law, you would have noticed the courts took the opposite approach to what they do now. Instead of turning over every stone in an attempt to invalidate a patent, the courts used to construe the law in a way that was favorable (less onerous) to patentee.
Today, the Federal Circuit look far more favorably to infringers than they do to inventors.
“One having skill in the art would certain know whether or night they are employing a “light” as part of my claimed combination. Or is it your position that a functional term, such as “light,” is inherently indefinite?”
I think there’s a disconnect here between those that write patent claims and those that litigate them (especially a certain class of mid-tier NPE patents).
To stick with your example, claim limitations that recite a light and a function that is typical of light (e.g., a light that illuminates a room) are almost never MPF – no one would ever put forth that construction at Markman. In this example, where this becomes problematic is when the function recited is something that the light couldn’t normally do on its own (e.g., “a light configured to generate a hybrid Type III/V emission pattern” – not the greatest example in the world, I’ll admit). When that happens, the structure recited is ancillary to the function (and proof of infringement is that the function itself is performed).
“So you believe that patent applications should be traps for the unwary. Miss disclosing an obvious variation of one of the known elements that you’ve claimed, and you’ve opened up your invention to be designed around. Sounds fair to me — if I happen to be an infringer.”
What you’ve described is the point of the doctrine of equivalents. And that certainly applies to MPF claims.
Further, part of the public notice of function of patents is that it tells the world what the patentee did not invent. Apparatus claims recited in functional terms don’t provide that notice: they effectively amount to “a widget that does X.”
When the function isn’t disclosed in the specification (and this is why the Defendants in Dyfan and VDPP sought MPF constructions), the claim is quite correctly indefinite.
“If you followed the CCPA and Fed Cir case law, you would have noticed the courts took the opposite approach to what they do now. Instead of turning over every stone in an attempt to invalidate a patent, the courts used to construe the law in a way that was favorable (less onerous) to patentee.”
Dude. This entire discussion about two Federal Circuit decisions overturning indefiniteness findings where there’s no question at all of the patent disclosing the claimed function – patentees kept families alive through continuation practice and drafted claims to cover products already on the market, even though the patent had no disclosure of the claimed function. That’s rather favorable to the patentee.
I think there’s a disconnect here between those that write patent claims and those that litigate them (especially a certain class of mid-tier NPE patents).
Here it is — the defense litigator’s mantra — these patents must be bad because a $100B dollar company doesn’t own them. Hence, the courts must gift us some easy way to invalidate them because we don’t want to do the hard work and actually find good prior art. Rather, we want to argue that the USPTO got it wrong — either as to 101 or 112.
Also, those that litigate them are like a food critic that never had to cook a meal — they can criticize to no end but have no idea as how to make things better.
Let me make a suggestion. Be an engineer for several years. Learn how easy it is to get the same result — but by doing a 100 different ways. Also, draft a couple hundred patent applications and try to get your client claim coverage that reasonably covers their invention and doesn’t allow for easy design arounds. When you’ve done that exercise, let’s have a discussion as to how to best to draft a patent application without it costing $100K.
a light configured to generate a hybrid Type III/V emission pattern
Does one skilled in the art know how to do this? If so, why do I need to include 100 examples (assuming this is construed as MPF) in my specification to keep my claim from being designed around? If one doesn’t know how to do this, then that is an issue of enablement.
Further, part of the public notice of function of patents is that it tells the world what the patentee did not invent.
There is no requirement for public notice of what the patentee did not invent — you made that up. If what was invented is a combination of a number of elements — one of which is the performance of some function (and how to perform the function is within the knowledge of those skilled in the art), then there is no need to describe 100/1000 different examples of how to perform that function. It is unnecessary.
patentees kept families alive through continuation practice and drafted claims to cover products already on the market, even though the patent had no disclosure of the claimed function
That’s a non sequitur and an issue regarding enablement. If the claims are not enabled, then reject under under 112(a).
When the function isn’t disclosed in the specification (and this is why the Defendants in Dyfan and VDPP sought MPF constructions), the claim is quite correctly indefinite.
Litigators, bleh — don’t understand the difference between lack of enablement and being indefinite.
“Here it is — the defense litigator’s mantra — these patents must be bad because a $100B dollar company doesn’t own them. Hence, the courts must gift us some easy way to invalidate them because we don’t want to do the hard work and actually find good prior art. Rather, we want to argue that the USPTO got it wrong — either as to 101 or 112.
Also, those that litigate them are like a food critic that never had to cook a meal — they can criticize to no end but have no idea as how to make things better.
Let me make a suggestion. Be an engineer for several years. Learn how easy it is to get the same result — but by doing a 100 different ways. Also, draft a couple hundred patent applications and try to get your client claim coverage that reasonably covers their invention and doesn’t allow for easy design arounds. When you’ve done that exercise, let’s have a discussion as to how to best to draft a patent application without it costing $100K.”
Dude. First, everyone here has a technical background, and a number of us worked as engineers before going to law school. I know I did. The horse you’re riding on is a lot lower than you think it is.
Second, your whining about large companies is just that – whining (fwiw, the clients I represent range from small to large).
Third, since your comments here suggest that you’ve rarely if ever litigated, arguing that a limitation is means-plus-function in district court is usually not a good idea unless you’ve got a clear cut indefiniteness argument, and that indefiniteness argument is difficult to pull off unless the patent doesn’t disclose the function (or, in one instance, disclaimed the relevant embodiment in an IPR, but that’s more funny than anything else).
“Litigators, bleh — don’t understand the difference between lack of enablement and being indefinite.
I can’t speak for life sciences litigation, but in high tech/telecomm litigation, an expert who says there’s no enablement is destroying his own credibility, and putting up that argument means sacrificing any possible prior art invalidity argument.
The horse you’re riding on is a lot lower than you think it is.
You haven’t gotten to the part about writing an enforceable patent application for under $100K.
arguing that a limitation is means-plus-function in district court is usually not a good idea unless you’ve got a clear cut indefiniteness argument
If what is disclosed in the specification of a MPF claim doesn’t match what your client is doing (or isn’t an equivalent), then yes it is a good argument to make. As for “a clear cut indefiniteness argument,” I haven’t seen the lack of one stopping a litigator from making that argument.
From the introductory guide to defense counsel arguments:
1) all claim terms are indefinite
2) all claims terms are not enabled/disclosed in the specification
3) the invention is abstract
4) the claims are obvious
5) the patent owner is a patent tr oll
Those get thrown up against the wall all the time to see if anything sticks. I may not do litigation full time, but I’m not a complete neophyte either.
“If what is disclosed in the specification of a MPF claim doesn’t match what your client is doing (or isn’t an equivalent), then yes it is a good argument to make. ”
The problem, in practice, with this approach is twofold:
1. Pursing an MPF construction when the spec recites structure for performing the function typically means you’re giving up prior art invalidity.
2. Whether the accused product meets the function/way/result is a fact-based inquiry that makes getting summary judgment of non-infringement harder.
“From the introductory guide to defense counsel arguments:
1) all claim terms are indefinite
2) all claims terms are not enabled/disclosed in the specification
3) the invention is abstract
4) the claims are obvious
5) the patent owner is a patent tr oll”
Leaving aside the patent troll comment (which you can’t make because that’s the first MIL any plaintiff files and always gets granted), the indefiniteness/enablement/obviousness arguments all contradict each other. You only get to run with one, and in most cases, you need an expert to testify to the issue. It’s usually suicidal to argue that the claims aren’t enabled to a jury, because the expert that testifies to that is admitting that he’s too stupid to understand the specification. The only time enablement ever comes up in high-tech patent litigation is as a throwaway section of an invalidity contentions cover pleading.
Plus, if you’ve got an enablement argument that’s in play, you’ve usually got a written description argument as well.
Williamson is en banc; panels shouldn’t be trying to change it.
They aren’t trying to change it. They are working to clarify it.
The issue is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” The ‘sufficient definite meaning as the name for structure’ needs clarification and that is what these cases are trying to do.
They are trying to weaken it, though. Williamson states the following:
We have also traditionally held that when a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite[ ] sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts v. XL Sys., Inc.,232 F.3d 877, 880 (Fed.Cir.2000).
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)
Both Dyfan and VDPP completely ignore the second way that a challenger can show that the term is an MPF limitation: does the limitation “recite ‘function without reciting sufficient structure for performing that function'”? Even the language is absent from both opinions.
I think you are trying too hard, SS – you point out a difference without a distinction, as the alternatives would be dictated by the facts of the case, and there is no “weakening” as you suggest.
The oral argument in Dyfan, and the questions Judge Stoll asked there, contradict what you say.