by Dennis Crouch
In the patent context, functional limitations describe inventions in terms of their function or intended use, rather than their specific structure or components. Such claims have been subject to much debate and litigation throughout the history of the US patent system. Notable Supreme Court cases like O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) significantly impacted patent practice and the balance between functional and structural claim drafting.
The pending Supreme Court case of Amgen Inc. v. Sanofi, No. 21-757 (2023) is another example, with the potential to further shift the landscape regarding functional claim limitations. The title of my essay on the case following oral arguments, “Bye Bye Functional Claims,” hints at my outlook. Although the patentee focused on other issues in its briefing, the Justices repeatedly questioned the permissibility of broad functional claim limitations.
Samuel Morse, inventor of the telegraph and Morse code, revolutionized communication. Morse’s 1840s patent included a controversial functional claim covering any method of transmitting information using electromagnetism, irrespective of the machinery used. Morse’s claim comprised a single element – the use of electromagnetism to communicate at a distance. It is understandable why Morse desired such a functional claim, as it provided broader protection against design arounds. A competitor’s product would infringe as long as it performed the claimed function, even if it utilized a different approach or structure.
In O’Reilly v. Morse, the Supreme Court deemed the functional claim too broad and thus invalid, establishing that patent claims should be limited to the specific means or apparatus invented rather than claiming any means for achieving a particular function. At the same time, the Court upheld Morse’s narrower claims that were limited to the specific telegraph apparatus he had invented. Id. See also Corning v. Burden, 56 U.S. 252 (1853) (“He cannot describe a machine which will perform a certain function, and then claim the function itself, and all other machines that may be invented to perform the same function.”).
Post-Morse, patentees adjusted their approach but continued using functional limitations. The Patent Office ceased allowing wholly functional claims with a single means-for element. Instead, the new model of claims recited a combination of elements or steps, with one or more individual components described functionally. This approach encountered another hurdle in 1946 with the Supreme Court’s Halliburton v. Walker decision.
Walker’s patent addressed an apparatus for locating underground strata during oil well drilling using acoustic echo measurements. The patent claims were written functionally, including “means communicating with said well”; “echo receiving means”; and “means … for tuning said receiving means.” US2156519. The Supreme Court concluded that using a functional limitation to claim an invention’s point-of-novelty was improper.
The language of the claim thus describes this 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. We have held that a claim with such a description of a product is invalid as a violation of Rev. Stat. 4888.
Id. Citing Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928); General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938). GE provided additional on-point language:
[T]he 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.
Id.
The 1952 Patent Act at least partially overturned this line of cases by introducing what is now 35 U.S.C. 112(f), allowing patentees to claim an element of an invention “as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” However, 112(f) is more of a trap than a panacea for patentees. While the resulting functional claim may appear broad in isolation, the statute includes a tight scope limitation: “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Thus, under the law, a means-for limitation is permitted in patents – even at the point of novelty – but it will be construed only to cover corresponding embodiments explicitly described in the specification and their equivalents.
112(f) has another feature: it only applies to situations where a patentee seeks to functionally limit individual elements in a multi-element combination claim. This appears to reflect Congress’s intent to permit element-by-element functional limitations in cases like Halliburton, but not wholly functional claims (single-element functional claims) such as those rejected in Morse. Morse-style single means claims remain unpatentable. In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).
Lets return to the Amgen case: Amgen’s scientists used a humanized mouse model to discover a host of monoclonal antibodies useful as a treatment for high LDL (bad cholesterol). In its specification, Amgen disclosed 26 amino acid sequences (not including the one used by Sanofi) and a methodology for creating and screening more. The patent before the Supreme Court does not claim the amino acids by sequence or by any structural element. Rather, the novel feature claimed is simply its capability to bind to a particular epitope of an antigen (PCSK9) and consequently support the liver’s natural capability of breaking down LDL without PCSK9 interference.
1. An isolated monoclonal antibody that binds to PCSK9 … [and therefore] blocks binding of PCSK9 to LDLR.
US8859741. As you can see from the claim language, the key novel feature of the invention is claimed in terms of what it does (“binds to PSCK9”) rather than what it is (a particular amino acid sequence). This is a classic functional limitation. And, it is closely parallel to the single-element claim design rejected in Morse. There is some factual debate in the case about the number of antibodies covered by the functional claim. The number is somewhere between 400 and millions, depending upon how you count.
What are some bottom lines for this story?:
- It is quite possible that the Supreme Court will interpret Amgen’s claim as a functional limitation and go on to consider application of its prior precedent on point discussed above.
- If the court sees the claim as parallel to that in Morse, the response will be to invalidate the claim.
- On the other hand, if the court fits the claim within the scope of 112(f), then the scope will be limited to only the structures actually disclosed and their equivalents. That result would likely lead to a non-infringement for Sanofi whose competing product is structurally different.
Oral arguments in the case were held in March and I expect a decision from the Court in late May or early June 2023.
I claim
1) A wheeled automobile comprising a means for passing other vehicles legally with 100% safety.
2) An automobile, wherein said automobile comprises wheels and a means for passing other vehicles legally with 100% safety.
Am I to understand from the comments below that claim 1 is invalid under 112(f) as a “single means” claim but claim 2 is somehow not invalid under 112(f) because it’s a (lol) “combination claim”?
In either case, the claims would need to be limited to structures disclosed the specification and, given the prior art we know of, those structures would need to be defined in structural terms distinguishing them from prior art structures or else it’s back to square one: functional claiming at the point of novelty.
I would argue that 112(f) SHOULD be read to apply to (1), but the “combination” language seems to suggest it does not. 112(f) itself does not invalidate single-means claims; the pre-1952 Act interpretations of the patent act not addressed by 112(f) continue to do so.
If the case law stating that single means claims are invalid still stands, then so too does the reasoning behind that case law. And the only reason is that functional claiming at the point of novelty is disallowed as a matter of first principle in any sane patent system. So sure you can use “means for” in your “combination claim” without that being fatal to the claim on its face because that’s what the legislation states (it’s a way to make the claims shorter). But if the function is at the point of novelty and you have no clear corresponding non-obvious STRUCTURE in your specification then the claim is invalid and that’s the end of the analysis. There can be no “claims a whole” bootstrapping to rescue such a claim because that would turn the entire 112(f) framework into a toothless joke.
Any “sane” patent system, you aver, Prophet. OK then, is the patent system in Europe “sane”? Below, I reproduce the relevant pargraph of the EPO’s MPEP. As you see, it allows function at the point of novelty but only in very particular and tightly constrained circumstances. Perhaps Amgen wants only in the USA what it already has in Europe?
“As a general rule, claims which attempt to define the invention by a result to be achieved are not allowed, in particular if they only amount to claiming the underlying technical problem. However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description or known to the person skilled in the art and which do not require undue experimentation (see T 68/85)”
Lots of equivalence to “per se” and “as such” in your spectacles there, Mr. Uber Alles.
A bit too abstract for your liking, anon, then? Not technical enough, perhaps. Inadequate as a basis for deciding whether functional language at the point of novelty is acceptable?
Have you any evidence that the EPO line, established in 1985 (very soon after the EPO opened for business) and undisturbed still the line today, is unfair to either inventors or the public, indefinite, or otherwise not fit for purpose?
“A bit too abstract for your liking, anon, then?”
Not at all.
While I did chuckle at your inserting “abstract” into the conversation, there is no tie of that notion to my post.
As to your evidence question, you appear to want to try to put some argument into my mouth — but I have advanced no such “fair or not fair” argument for you to try to ‘counterpoint’ me.
Why should I bother with “evidence” for something I have not argued?
Two points:
1) Section 112(6) is not a grounds for invalidity, so it makes no sense to say that either of those claims are “invalid under 112(6).”
2) Neither of those claims is a single means claim. Both recite wheels, and therefore both are combination claims.
… and the hobby horse returns “ structures would need to be defined in structural terms distinguishing them from prior art structures”
Objective physical structure (reminder):
link to facebook.com
Hint: what Malcolm clamors for would be impossible to examine (think Design Patents run even more amuck)
Further reminder:
112(f) was written as a benefit and optional claim format for applicants.
Not as a “gotcha.”
And, since the reminder still appears to be being 1gn0red:
Prof. Crouch’s term of Vast Middle Ground.
Still another reminder: Claims as a whole eliminates this nonsense of “Point of Novelty.”
Still further reminder: Malcolm has admitted that the Act of 1952 as written by Congress is NOT how he would want the law to be for the points at hand and that he requires Not Only that the Supreme Court have had rewritten that law from the Bench, but also to have had rewritten that law in a manner that is different than the plain reading of their (self-conflicting) cases.
The only point of 112(f) is as a shorthand for claim drafters. That’s it. Functional claiming at the point of novelty is still not permitted and you don’t get excused from putting into your specification the exact structures which (but for 112(f)) you would need to put in your claim.
Your partial correctness (optional shortcut nature) only exacerbates your error as to “objective physical structure.”
Dennis:
I agree with this. As my SCOTUS brief indicated at note 13: “Had the lower courts in the instant case construed the functional claim at issue properly (as limited to disclosed structural embodiments and their equivalents), there would be no present dispute over enablement, Such claims would be no broader than a structural Markush claim reciting the same species, structural equivalents of which would then be protected under the current doctrine of equivalents.” The “mean-plus” magic words approach needs finally to be interred.
That said, however, John Vandenberg’s excellent SCOTUS brief describing these as “naked functional claims” (and thus not combinations falling within the scope of 112(f)) has lots of merit as well. I would just interpret 112(f) as including such claims for interpretation/construction purposes.
The problem with this is in the mechanical/electrical/information processing arts is that functional language expressly is mean to encompass all known solutions. There are too many solutions to problem to put them in a specification.
I’ve quote before from engineering books that talk about functional language and its meaning as well as the ladders of abstraction. All that is known by POSITA must be included.
… and I matched the engineering side with the legal side
(And the anti’s insist on 1gn0ring all of it)
Links to the briefs:
Sarnoff: link to supremecourt.gov
Vandenberg: link to supremecourt.gov
The “mean-plus” magic words approach needs finally to be interred.
I am kind of surprised that it lingers on so durably. If Sanofi had wanted, instead of attacking Amgen’s claims on written description and enablement grounds, they could simply have invoked Williamson v. Citrix and argued that Amgen’s claims should get a 112(f) construction. They would have had a very solid non-infringement argument on that basis.
I understand why that is not a popular option now that Sanofi has created a precedent under which the accused infringer can invalidate rather than merely avoid functional claims. At the time that Sanofi went down this road, however, there was no such precedent, so I am still not sure they did not focus more effort on a non-infringement argument based on Williamson.
In any event, anyone (patentee or accused infringer) who wants out of the “magic words” paradigm can step out of it any time they want, based on Williamson v. Citrix. For whatever reason, however, few litigants (plaintiff or defendant) seem to want to do so.
“I am kind of surprised that it lingers on so durably.”
Why? (No snark)
Contrast with the Jepson claim format.
(We are long overdue on a study of that format’s [non] use)
Why, anon? Why are we long overdue a “study” on something that has fallen long ago completely out of favour?
Perhaps because, for some reason not apparent to me, you see it as useful and would advocate its return to favour? Otherwise, what’s the point of such a “study”?
Means plus function language is used all over the rest of the world to reach the broadest achievable scope of protection in a claim. Perhaps quite a few claims prosecuted at the USPTO still bear signs of their original drafting elsewhere in the world. Is that one possible explanation why in the USPTO M+F “magic” wording lingers on so persistently? Or is it drafters hedging their bets, with one independent claim in M+F language, the other not? Perhaps even both explanations are making a contribution?
Why you ask?
Because the “resurrection” attempt about “point of novelty” has a direct tie to Jepson claim format.
That should be obvious — even to you.
I think we should make predictions. I’m reading the oral arguments. So far not looking good for patent rights.
That is always the easy prediction.
Sadly.
(Broken) scoreboard
I, or course, mean more specific predictions.
In comments 5, 4 and 3 there is so much good sense, from writers who are seeing both sides of the argument. One has to wonder at the amount of confusion and obfuscation that can be raised by writers who, serving their respective clients of the day, are pushing just one side of the argument.
One hopes that the Justices have the perspicacity to recognise and then adhere to the right path through the maze.
The “right path” would be to recognize the Ac of 1952’s blowback against the Supreme Court itself.”
Those citing pre-1952 cases (including the Professor himself) are NOT following the law as written by Congress.
I’m curious about this line of argument, because it seems pretty clear, from 30,000 feet at least that:
1) the predecessor statute of Section 112 was interpreted by the Supreme Court in the cases referred to by DC above and many others;
2) Congress recodified the Patent Act, making only immaterial adjustments to the previous version of Section 112, except adding the MPF section; thus,
3) all precedents remain good law except to the extent they conflict with the MPF section.
Viz., if a claim qualifies for 112(f), it will not be held invalid under Halliburton etc. if it meets the requirements of 112(f).
Halliburton was abrogated in the Act of 1952.
+1
Comments have been hit or miss several days now (sometimes hitting filters, sometimes not)….
Halliburton was abrogated.
Writings of the writer of the Act of 1952 have been clear on this.
Halliburton, but not Morse.
And Halliburton was replaced with now 112(f). The only question is how to determine whether it applies to specific types of “functional” claiming language (as in Amgen).
That is an academic mistake.
Terms sounding in function and combination claims are well represented outside of the 112(f) PURE function alternative made available to applicants.
See also Prof. Crouch’s own “Vast Middle Ground
(Hence my reminder elsewhere on this thread)
Morse – let’s look at the claims that did survive (oh, now why would only the negative ever only be discussed….)
No looking at the other from Morse yet, eh?
What indication is there that Halliburton was abrogated? Perhaps the precise holding that a patent claiming only a “means” of doing something is invalid under 112, since it’s factually congruent with 112(f).
But Halliburton did not claim to do anything special, beyond applying the rule established for product claims in Holland Furniture; Wabash; and United Carbon to combination claims:
“The language of the claim thus describes this 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. We have held that a claim with such a description of a product is invalid as a violation of Rev.Stat. § 4888. Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245, 277 U. S. 256-257; General Electric Co. v. Wabash Appliance Corporation, supra.”
I see no reason at all to think that the 1952 Act disturbed this broader principle.
Citing other pre-1952 cases does not — and cannot — make the point that you think that you are making.
What indication is there that Halliburton was abrogated?
Good question. I have asked that same question dozens of times and never do I get an answer. I hope that one arrives now that you have asked.
From PJ Federico’s Commentary on the 1952 Act (he was the co-author of the Act):
“The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined. The language specifies “an” element, which means “any” element, and by this language, as well as by application of the general rule that the singular includes the plural, it follows that more than one of the elements of a combination claim may be expressed as different “means” plus statements of function. The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word “cover”), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which “reads on” the prior art.”
Thanks, Prof Sarnoff. That is, of course, a useful answer, but not quite to the question that I (or Kyle) really should have asked. Allow me to rephrase slightly: what indication is there that Halliburton was abrogated, as opposed to merely diminished? Federico writes that “decisions such as that in Halliburton… are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined.”
So, are we in the world in which Halliburton is obsolete, or merely modified? How can we tell?
Dozens and The Prophet:
Of course functional claiming at the point of novelty is problematic. Which is why such claiming is supposed to be limited to factual structural equivalents to disclosed structures performing identical functions as its scope. And of course, the failure to apply 112(f) to such functional language not using means-for creates precisely that problem. Presumably claims that only recite single element functional limitations are just invalid as claiming a function or result (single-means claims). But courts are upholding and broadly construing functional claim language that they implicitly find are not subject to 112(f) interpretive limits in combination (and single-means) claims. They should not do so, but as you note Williamson is currently “the law,” unless SCOTUS says something about it in Amgen or later, or Congress steps in to clarify.
“But courts are upholding and broadly construing functional claim language that they implicitly find are not subject to 112(f) interpretive limits in combination (and single-means) claims. They should not do so,”
1) please show me at least one of these so-called single means cases.
2) more than certain that “implicit” is not quite accurate and that explicit cases abound (the “baby car seat sized to fit” case comes to mind)
3) as already noted, terms sounding in function are well-established (and explicitly even) outside of 112(f) — it is simple legal error to pursue these attempts to showhorn the issue into solely being the optional path of PURE functional claiming
4) that you assert “they should not do so” is merely your emotional feelings and has no foundation in law.
^^^ more evidence of the problem of academics, proselytizing what they WANT the law to be instead of objectively discussing what the law IS.
Another way of putting it is that the “abrogation” of Halliburton and its predecessors is only as wide as 112(f). Claim language that would trigger 112(b) invalidity under those precedents—for using functional language to describe novel claim elements—is saved from automatic condemnation if it qualifies for 112(f).
It’s way out of step with black letter statutory construction and precedent on implied repeal to say that the Act altered the law’s application to situations beyond 112(f) simply because of the general mood some commentators alleged existed at the time of drafting.
It’s way out of step with black letter statutory construction and precedent on implied repeal to say that the Act altered the law’s application to situations beyond 112(f) simply because of the general mood some commentators alleged existed at the time of drafting.
Exactly. I think most folks have heard so often that the 1952 act “abrogated” Halliburton, that they never stop to think what that means.
Congress cannot “abrogate” a precedent simply by thinking mean thoughts about it. To abrogate a precedent, Congress must actually write language into the statute that is inconsistent with the precedent (as they did to abrogate Cuno’s “flash of genius” test by providing in the final clause of §103 that “[p]atentability shall not be negated by the manner in which the invention was made”).
So, what language did Congress write to “abrogate” Halliburton? The answer is §112(3) (which later became §112(f) in the AIA redrafting of the statutory text). That means—as you so eloquently put it—that the “abrogation” of Halliburton and its predecessors is only as wide as 112(f)—and not a hair’s breadth wider. Halliburton is not abrogated for those unwilling to avail themselves of §112(f).
It is definitely not the case that precedents get wiped out every time that Congress passes a new version of the statute. Quite the opposite, in fact. The enduring force of precedent after statutory revision is the very essence of the doctrine of statutory stare decisis. Kimble v. Marvel Entertainment, 576 U. S. 446, 456 (2015). Therefore, Halliburton remains effective, by default, to whatever extent Congress leaves it untouched.
Replying to Dozens. Yes, implied repeal law is a mess, and it tends to be construed narrowly. That said, the key issue is how to interpret the “means for” langauge, as limited to magic words or not. If not so limited, then all functional claiming language in combination claims may have been swept in. The only way to know is to get a case before SCOTUS that addresses the issue (temporarily).
Wrong Kyle
Wrong Greg
Wrong Josh
All for reasons already provided.
We have not yet arr “i” ved yet, have we Greg?
From the hidden link:
“This time I have to concede that there is indeed upward movement in total compensation. Real comp is still negative over the past year, but it’s been positive for two quarters in a row now.”
Question remains: are you (the Royal You) better off now or before Puppet Biden was installed?
Actual fo “l” ks would NOT be
“surprised at how combative the interview was.” was with Dr. Fauci, and instead are surprised that the
L
I
A
R
in charge of “The Science” is still a free man and not locked up for his role in the millions of deaths from COVID worldwide.
But Greg wants to hide this signal as well.
If not so limited, then all functional claiming language in combination claims may have been swept in. The only way to know is to get a case before SCOTUS that addresses the issue (temporarily).
Agreed.
And yet more OMB-TDS from Greg.
Ag “r” eed
Re: Professor Sarnoff’s citation of PJ Federico’s famous commentary. He and others obviously had certain views that Congress may not have fully shared–and there’s little evidence that they did share, at least regarding Section 112.
We ordinarily don’t ask what individual senators or congressmen, let alone staffers or draftsmen, thought about a bill during its crafting as a method of statutory interpretation. I don’t see why the 1952 Act should be any different, and especially not where the question is whether Supreme Court precedent should be deemed overruled by implication.
But I think it’s fine to say that Halliburton’s narrow holding that 112 condemns use of a functional “means” limitation for an individual element in a combination claim has been overruled by 112(f). But it does not touch the broader holding of Wabash, United Carbon, and Holland Furniture.
Also in response to Dozens:
Yes, 112(f) doesn’t address Wabash, UC, and Holland – which really go to whether such claims can be “distinct” if competitors can’t know how broad they are. Further, Halliburton stood for not using functional language “at the point of novelty,” which 112(f) clearly overturned by its language permitting use of “means for” in elements of combination claims. From Federico, it would seem that it did not remove the prior judicial interpretation that single element functional claims are prohibited. But (again for Dozens) the only way to tell is to have the Supreme Court rule on the issue because we don’t have a unified method of statutory interpretation, and even then as the Supreme Court seems not to follow precedent anymore any such interpretation may be subject to change in the future, unless and until we get a constitutional amendment changing the role of judicial review.
Halliburton stood for not using functional language “at the point of novelty,” which 112(f) clearly overturned by its language permitting use of “means for” in elements of combination claims.
In #8 above, you castigate the “magic words” interpretation of §112(f), but clearly the “magic words” approach is the law. Williamson v. Citrix provides that §112(f) is presumed to apply where the claim recited the magic word “means,” and is presumed not to apply where the claim does not recite the magic word. Just like any other presumption, this presumption can be defeated, but one or the other party must actually raise the issue and adduce evidence before the presumption can be overcome.
So, what happens when the claim does not recite “means,” but does use a functional recitation at the point of novelty? If neither party attacks the operative presumption, then §112(f) does not come into the analysis. At that point, does the claim fail under Halliburton? If not, where else in the statute do we find the warrant to set Halliburton’s holding aside?
“ Further, Halliburton stood for not using functional language “at the point of novelty,” which 112(f) clearly overturned by its language permitting use of “means for” in elements of combination claims.”
Functional claiming at the point of novelty is so obviously problematic that it boggles the mind anyone would make arguments like this. Why was 112(f) limited to combination claims, do you think? What possible reason could there be for doing that?
Whatever you think the purpose is, given the extremely liberal rules for claim drafting in the US, that purpose would be obliterated if functional claiming at the point of novelty were allowed in a so-called “combination” claim.
This is a logic exercise on the same basic level as that which confounds so many lazy complainers who insist that claims can’t be dissected for eligibility purposes. Please try harder.
Boggles the mind….?
The only thing boggling the mind is the attempt to retrofit history in attempts to block innovation protection.
Oh wait — one only has to look at those pursuing this avenue.
Greg’s hidden link in the section sign…
Why hide this?
Congress passed the 1952 Act, which was intended primarily as a recodification of the Patent Act since that was a general governmental project of the time. It doesn’t really matter what their assistants thought about it.
No – not at all – I suggest that you do a better dive into the history of the Act of 1952.
Hint: it was a repudiation of a Supreme Court gone rogue and very much anti-patent.
A self created Supreme Court description:
“The only valid patent is one that has not yet appeared before us.”
The point provided is NOT ‘mere assistants.”
You do really need to brush up on your history.
Here’s the sum total of what the House and Senate Reports on the 1952 Act had to say about the 112 revisions:
“A new paragraph relating to functional claims is added.”
-(i.e. current 112(f), then 112, third paragraph).
Not getting the “repudiation” vibe from this. By the way, the quote you provided was from Justice Jackson’s dissent in Jungersen, where he argued for upholding the patent and parodied the majority’s view.
“What indication is there…”
Shows indications in both reference to writers of the Act AND the impetus for Congress to get off their duff. Defeats attempted bootstrapping of pre-1952 case citing.
1gn0res shown indications (clenches eyes tight).
‘I don’t see…’
“Not getting the [ ] vibe”
‘Congress MAY not have shared’ (with NO substantiation of this… – your ‘sum total’ is NOT the sum total of history, and yes the dissent was exactly intended to parody the majority of the Court, as that is precisely the point of it BEING parody)
Yep – as I noted, you have really do have to brush up on your history – you (and here, the Royal You is also in play) is exactly why we have repeated history with a Supreme Court that insists on sticking its fingers into the wax nose of patent law.
If the court sees the claim as parallel to that in Morse, the response will be to invalidate the claim.
On the other hand, if the court fits the claim within the scope of 112(f), then the scope will be limited to only the structures actually disclosed and their equivalents. That result would likely lead to a non-infringement for Sanofi whose competing product is structurally different.
Scoreboarded since 2012ish(? I believe). This is the right answer. There is one proper use for non-means-plus functional language and that is to describe a class of well known things which are interchangeable with respect to some aspect of the invention. You can functionally claim fastening element A to element B when fastening is known in the art, the invention is not about fastening, and the embodiments are equivalent to each other regardless of what type of fastening is performed.
The vast majority of the uses today in, e.g., computers, is to have a few structural elements like processors and then a series of functional limitations that generate a context together with a functional limitation that solves a problem. These claims are routinely allowed by the office and are frankly all invalid, because the claims never provide a specific solution to anything. They either include no algorithm at all or an extremely mediocre unclaimed algorithm. They then describe this mediocre algorithm so vaguely and poorly that they embrace the best possible algorithm to solve the problem. This lets the attorney transform the mediocre inventor into a super inventor that not only presented a solution, but presented the best possible solution. This results in multiple people “discovering” the exact same thing.
I do not, btw, think the court will issue something as cut-and-dry as “either means plus or invalid functional claim.” It will write something that will make functional claiming harder, and if the problem persists a few more years they will turn the screws again. I do think, however, that Prof. Crouch’s if-then-else is de facto the actual law according to the supreme court and would apply in 99% of cases.
See also Corning v. Burden, 56 U.S. 252 (1853) (“He cannot describe a machine which will perform a certain function, and then claim the function itself, and all other machines that may be invented to perform the same function.”)
Not according to your average jurist prosecuting a patent nowadays, haha.
^^^ relying on a broken scoreboard is one of the reasons why the current state of eligibility is in such a mess.
1gn0ring that state of mess immediately reduces one’s credibility to zero.
Agree and well put.
” … Not according to your average jurist prosecuting a patent nowadays, haha.”
Yea, but that doesn’t stop our average jurist from trying, even as the “broken patent system” (their words) tells them what they are doing will likely not survive litigation, PTAB, or an appeal.
Agreed.
Just a nit: That is not a very accurate depiction of the U.S. Supreme Court building.
This is an AI created version of SCOTUS.
What? No mention of your own coined term of “Vast Middle Ground?”
questioned the permissibility of broad functional claim limitations
What are the terms light, distributor, engine, fastener, hinge, container, switch, refrigerator, transformer, motor, lock?
Are these broad functional claim language or claims to specific structure? How should these terms be interpreted?
1. An isolated monoclonal antibody that binds to PCSK9 … [and therefore] blocks binding of PCSK9 to LDLR.
The difference between the language I reproduced above and “binds to PCSK9” is that there are many KNOWN embodiments of the language reproduced above, whereas the known embodiments for the functional language of “binds to PCSK9” is probably limited to those disclosed by the inventors.
In this instance, a claim that includes something like “light, distributor, engine, fastener” should not be limited to those embodiments contained within the specification, whereas the term “binds to PCSK9” should be limited to those embodiments disclosed by the inventor.
Any discussion regarding functional limitations should recognize this important distinction between “functional” limitations that were previously known and those that are not. Otherwise, the solution to one problem begets another problem.
+1
Any discussion regarding functional limitations should recognize this important distinction between “functional” limitations that were previously known and those that are not.
Agreed. This is why the Court was previously careful to take issue with claims that “use[] conveniently functional language at the exact point of novelty,” (emphasis added). Here’s hoping that the Court does not erase that distinction when it hands down its ruling in Amgen.