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Means claiming January 8, 2010

Posted by Brian Schar in Patent prosecution.

In the last couple of months, the Federal Circuit has decided a number of cases in which construction of  “means” terminology was required.  I’m surprised that people were still means claiming well into the 90s, not to mention the 21st century.


1. Karen G. Hazzah - January 10, 2010

Care to elaborate on why you’re surprised? Are you thinking of M+F in general, or in the electronics/computer context? Restaurant Technologies is the first one in a while (that I can recall) involving M+F in a mechanical rather than an electronics/computer context.

I view 112P6 as a text replacement operator: “means for fastening” is a shorthand way or writing “screw OR nail OR rivet OR bolt”. Now, when there is a single word that covers all the embodiments — e.g., fastener — you’re probably better off using that generic term. But when there isn’t a generic term, I think 112P6 is useful.

I think 112P6 *could* be very useful in electronic cases, for precisely this reason. Specifically, there are many functions that may be implemented in hardware (ie., specialized logic like an ASIC) or in software (ie, instructions executing on a processor). I don’t know of a good word that covers both implementations. MEANS FOR Xing is a great way to cover both.

Unfortunately, the Federal Circuit went down the wrong path back in 1999 with WMS Gaming, where they got the wrongheaded idea that the STRUCTURE of a processor-executed function is an ALGORITHM. [As a former software developer, this idea makes no sense to me.]

So now we see software claims being struck down left and right under Aristocrat (which is nothing more than a restatement of WMS Gaming) because there isn’t an algorithm, or enough of an algorithm to satisfy the court.

Karen G. Hazzah
Patent Prosecution Blog: allthingspros.blogspot.com

2. Brian Schar - January 15, 2010


My point was perhaps overly simplistic. I agree with what you’re saying in its entirety. Whether one uses means claiming or not, a well-written specification should disclose a plethora of alternative embodiments. I prefer to be my own lexicographer when there isn’t a good word that describes all of those alternative embodiments, but in a sense that’s a subset of proper means claiming.

What I have a hard time understanding is that some practitioners, even into the recent past, are still drafting applications as if the term “means” magically creates a broad claim regardless of what the specification discloses.

Additionally, well-written means claims don’t make it to the Federal Circuit, so there is a selection bias in the published opinions as to badly-written means claims. It’s entirely possible that if I had time to review district court opinions that construed means claims that I’d find means claims held to be valid and infringed.

Thanks for taking the time to comment!


3. Karen G. Hazzah - January 15, 2010

>I prefer to be my own lexicographer when there isn’t a good
>word that describes all of those alternative embodiments.

Hmm. The apps I deal with rely almost exclusively on functional language. So I don’t typically need to come up with a noun that describes something that performs the function.

I’m glad, because doing so — calling a piece of software that classifies a “classifier” — will almost certain trigger application of 112P6 and subject the claim to the requirements of WMS Gaming. [To be avoided for the reasons described in my last comment.]

>if I had time to review district court opinions that construed
>means claims that I’d find means claims held to be valid and

I’ve read some post-Artistocrat D.C. opinions (all in the electronics/computer area), and I was surprised to see plenty of M+F claims that were found valid. IMHO, most of them were valid only because the D.C. wrongly applied WMS Gaming.

I don’t recall infringement rulings in those D.C. opinions. But because WMS Gaming requires an algorithm to stand in for each “structure”, infringement will be found only when the accused performs one of those algorithms. Therefor, I would expect very few infringement findings in electronics/computer cases, even *if* the claim survived an invalidity challenge.

Karen G. Hazzah
Patent Prosecution Blog: allthingspros.blogspot.com

4. Brian Schar - January 15, 2010

I think the differences in our attitudes stem from the fact that I haven’t written a software or EE claim in almost 10 years, and deal exclusively with mechanical devices. Having said that, a nonce word like “mechanism” triggers M+F interpretation, which once again reduces the practical advice to “make sure your spec is thorough and presents many alternatives.” That’s always a good idea whether one is means claiming or not.

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