functional claiming for software patents: leveraging recent...
TRANSCRIPT
Functional Claiming for Software Patents:
Leveraging Recent Court Treatment Surviving 112(f) and Disclosing Functional Basis for Software
to Meet Heightened Standard of Review
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THURSDAY, FEBRUARY 23, 2017
Presenting a live 90-minute webinar with interactive Q&A
James J. DeCarlo, Shareholder, Greenberg Traurig, New York
Doris Johnson Hines, Partner, Finnegan Henderson Farabow Garrett & Dunner,
Washington, D.C.
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educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the joint authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. And not all views expressed herein are subscribed to by each joint author. Thus, the joint authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm) and Greenberg Traurig cannot be bound either philosophically or as representatives of various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the joint authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm) or Greenberg Traurig. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.
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Outline
I. Review of the Williamson decision and how the
courts have applied Williamson
II. Functional claiming in software patents
III.Benefits and risks involved with using functional
claims
IV.Best practices for leveraging §112(f) and functional
claims for maximum patent protection
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Synopsis of Williamson
Williamson addressed the MPF language of the asserted patent and held
that the claim terms were invalid under §112(f) because there was no
supporting structure (the “means”) disclosed in the patent’s specification
for performing the claimed functions.
The Court first analyzed the claims and found that the claim limitation
beginning with “distributed learning control module” was “in a format
consistent with traditional means-plus-function claim limitations.”
The Court reasoned that the term “module” was “a well known nonce
word” in that it “is simply a generic description for software or hardware
that performs a specified function.”
The Court stated that using nonce words “is tantamount to using the word
‘means’ because they ‘simply do not connote sufficiently definite
structure’ and therefore may invoke §112, para. 6.”
The Court found the limitation “distributed learning control module” did
not impart any structure and therefore invoked MPF treatment.
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Williamson continued:
The Court then analyzed whether there was sufficient structure in the
specification to support the “distributed learning control module.”
The Court held it did not because “[t]he specific does not set forth an
algorithm for performing the claimed functions.”
The Court reasoned:
“We require that the specification disclose an algorithm for performing
the claimed function…The algorithm may be expressed as a
mathematical formula, in prose, or as a flow chart, or in any other
manner that provides sufficient structure…
Williamson points to certain disclosures in the specification … [and]
argues that the ‘distributed learning control module’ controls
communications among the various computer systems and that the
‘coordinating’ function provides a presenter with streaming media
selection functionality. These disclosures, however, are merely functions
of the ‘distributed learning control module.’
The specification does not set forth an algorithm for performing the
claimed functions.”
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How Williamson is being applied by District Courts:
In determining whether §112(f) is invoked following Williamson, Courts
first analyze the claims to determine if a claim limitation(s) is in a format
consistent with traditional means-plus-function (MPF) claim limitations.
> Such analysis is based on whether the claimed limitation provides or
imparts any structure to the claimed function being performed.
> Once the Court establishes that a disputed claim term is drafted in a MPF
format, thereby invoking §112(f), construction of the term is a two-step
process.” Not Dead Yet Mfg. V. Pride Solutions, LLC, 2015 U.S. Dist. LEXIS
135629 (N.D. ILL. Oct. 5, 2015) citing Williamson.
> “First, ‘[t]he Court must identify the claimed function.’” Id.
> “Second, ‘the Court must determine what structure, if any, disclosed
in the specification corresponds to the claimed function.’” Id.
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Cases following the holding in Williamson:
Verint Sys. v. Red Box Recorders, Ltd., 166 F. Supp. 3d 364 (S.D.N.Y. Jan. 4,
2016);
GoDaddy.com, LLC v. RPost Communs. Ltd., 2016 U.S. Dist. LEXIS 5955 (D.
Ariz. Jan. 19, 2016);
SyncPoint Imaging, LLC v. Nintendo of Am. Inc., 2016 U.S. Dist. LEXIS 677
(E.D. Tex. Jan. 5, 2016);
Farstone Tech., Inc. v. Apple Inc., 2015 U.S. Dist. LEXIS 137819 (C.D. Cal.
Oct. 8, 2015); and
Tele-Publishing, Inc. v. Facebook, Inc., 2016 U.S. Dist. LEXIS 120778 (D.
Mass. Sept. 7, 2016).
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Verint Sys. v. Red Box Recorders, Ltd. (S.D.N.Y)
This case involves patents-in-suit directed to hardware and software for
recording and analyzing large amounts of data for quality assurance
purposes and integrating what is occurring on an employee’s computer
with what is occurring on their telephone.
The claims analyzed for means-plus-function treatment:
Claim 13 of U.S. Patent No. 7,203,285 (the ‘285 patent);
Claim 17 of U.S. Patent No. 7,774,854 (the ‘854 patent);
Claim 39 of U.S. Patent No. RE43,324 (the ‘324 patent); and
Claim 18 of U.S. Patent No. RE43,386 (the ‘386 patent).
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Claim 13 of the ‘285 patent:
13. A communications recording and analysis system comprising:
at least one recorder operative to record voice information associated with
a communication, screen content information associated with the
communication, and input/output information associated with the
communication and with a computer from which the screen content was
acquired; and
a first computer application operative to access the voice information, the
screen content and the input/output information and to construct an
integrated real-time data stream comprising the voice information, the
screen content information and the input/output information;
wherein the integrated real-time data stream is configured to enable
progress of the communication to be reconstructed such that screen
content information and input/output information is correlated with the
voice information of the communication.
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Claim 13 of the ‘285 patent continued:
At issue was whether the term “computer application” provided
sufficiently definite structure for the two claimed functions (access and to
construct) to limit the claim in a meaningful way.
Plaintiff argued “not that the claim provides structure but rather the term
‘computer-application’ itself connotes structure to a skilled artist” by
referring “to IBM Dictionary of Computing 3 (10th Ed. 1994) which defines
an ‘application’ as:
‘[a] collection of software components used to perform specific types of user-
orientated work on a computer.”
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Claim 13 of the ‘285 patent continued:
The Court found this argument unpersuasive and held that the claim
recites insufficient structure.
The Court found that the dictionary definition of the term computer
application:
“fails to provide sufficient additional structure that would not
otherwise be implicitly understood if the claim were defined as ‘means
for performing’ the aforementioned computer-implemented functions.
Indeed, in many of the Federal Circuit cases interpreting ‘computer-
implemented means-plus-function claims’ the Court understood the
means claimed to be software executed by a computer. The fact that
the ‘means for’ language was already understood by the Court to
implicitly refer to a sub-class of MPF claims composed of two structural
elements – programs executed by a microprocessor – makes clear that
explicitly claiming a ‘computer application’ does not add sufficiently
definite structure.”
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Claim 13 of the ‘285 patent continued:
The Court, having determined claim 13 to be a MPF claim, then turned to
determining whether the patent disclosed an algorithm to perform the
“access” and “construction” functions as claimed.
The Court held that “the specification of the ‘285 patent fails to disclose
any type of step-by-step procedure.”
The Plaintiff argued that the disclosure for Call Flow Recordings (CFRs) in
the Specification provided the required procedure to support the claimed
functionality.
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Claim 13 of the ‘285 patent continued:
The relied upon section (col. 9, l. 33 – col. 10, l. 3) states, inter alia:
“The particular features related to this embodiment of the invention are as
follows. The main purpose of these enhancements is to provide a Call Flow Recording
(CFR) that details--to the level of detail required for a given application--the progress of a
call through the system this CFR is not a database record but is actually a recording of a
real-time data stream that allows the progress of the call to be reconstructed including
both the route it took through the call handling process--potentially down to the
individual key-strokes entered--and when each step occurred.
These CFRs are stored within the generic recording system as ‘calls’ of a new,
well-known, Format type. This allows the retrieval and replay tools to recognise them and
display them appropriately as opposed to trying to replay them as audio calls. The format
identifier used is chosen to be in the range reserved for variable bit rate streams.
These CFRs are tied to the other components of the call, such as voice recording
and screen content record, by use of cross-reference fields within their call detail
records. Each CFRs call detail record includes the globally unique reference number of the
‘parent’ call--typically a voice recording--to which it refers.
Additionally, ‘Parent’ and ‘Child’ flag fields can be used within the call detail
records to alert applications to the fact that the voice call in question has one or more
associated ‘calls’ and, conversely, that the CFR has a related parent call and should not
be viewed in isolation…”
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Claim 13 of the ‘285 patent continued:
The Court reviewed the sections of the ‘285 patent identified by the
Plaintiff as providing the needed support (see previous slide) but found the
sections only highlighted the “algorithmic structure” and lacked “an
explicit step-by-step procedure.”
Specifically, the Court stated that the cited portion “assumes the existence
of ‘real-time data stream[s]’ and describes the characteristics of such
streams that might make the construction of an integrated stream possible
but contains no such step-by-step procedure for doing so.”
The Court stated that “where a disclosed algorithm supports some, but not
all, of the functions associated with a means-plus-function limitation, we
treat the specification as if no algorithm has been disclosed.”
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Claim 17 of the ‘854 patent:
17. A system for protecting information provided to an agent via a
communication network, said system comprising:
a communication monitoring system operative to monitor an interactive
communication responsive to an agent request via a communication
network and electronically identify information contained in the
communication that is to be protected; and
a recording device operative to record at least a portion of the
communication;
wherein the communication monitoring system is further operative to
provide instructions to the recording device responsive to electronically
identifying the information that is to be protected such that unauthorized
access to the information is prevented.
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Claim 17 of the ‘854 patent continued:
At issue was whether the term “monitoring system” provided sufficiently
definite structure to avoid MPF treatment.
The Court found the term “communication monitoring system” did not
suffice to connote a definite structure, rather it was claimed as
“operative” to perform three functions:
To monitor an interactive communication response…
To electronically identify information contained in the communication…
To provide instructions…to electronically identify the information that is to be
protected…
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Claim 17 of the ‘854 patent continued:
The Court further found that the term “system” did not impart sufficient
structure.
The Court stated that a “[s]ystem standing alone is a nonce word that does
not describe a structure that could perform the listed functions and the
modifier ‘communication monitoring’ provides a functional description of
the system but no structure.”
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Claim 17 of the ‘854 patent continued:
The Court first looked at FIG. 4 of the ‘854 patent and found that while
this system does have memory for storing software for execution, there
was no “sufficiently definite structure to save claim 17 from being
construed as MPF…”
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Claim 17 of the ‘854 patent continued:
The Court then looked at the specification and found that the
“specification provides no algorithm for performing the claimed
functions.”
The Plaintiff relied upon the specification’s mention of “various
methodologies” such as an “undisclosed ‘voice recognition algorithm” to
provide the required functional disclosure for the claim to “electronically
identify information”; however, the Court was not persuaded.
For example, col. 4, l. 24 – col. 5, l. 36 of the ‘854 patent reads:
“Thus, the various methodologies for protecting information can be generally categorized in
one of the following groups; namely, 1) those methodologies that operate to ensure that at
least part of the information is not or will not be committed to long term storage, 2) those
methodologies that operate to modify at least a portion of the information that is or will be
committed to long term storage, and 3) those methodologies that operate to tag certain
portion(s) of a communication and to apply security to the tagged portion(s)…”
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Claim 17 of the ‘854 patent continued:
The Court found such disclosure was a mere “outline” or “basic
explanation” of what the monitoring system “could do,” and nothing more.
In fact, the Court appears to have found that such disclosure called into
question whether the Section 112, para. 2 written description requirement
was satisfied.
In considering claim 17 using MPF analysis, the Court found that the
disclosure lacked any step-by-step procedure. The Court stated that to rely
on such a mere outline would “undermine the purpose of the definiteness
requirement.”
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Claim 39 of the ‘324 patent:
39. A recording system for capturing and recording audio data packets
transmitted across a data network, comprising:
a data switch operable to receive a plurality of call setup requests,
requesting to establish a voice data session between a calling party and a
called party, the voice data session comprising audio data packets
communicated between a calling party and a called party via a data
network;
a monitoring device operable to capture the audio data packets received
by the data switch, wherein the monitor is operable to identify a call to
which the audio data packets belong, and to associate the audio data
packets to a voice interaction session; and
a data store operable to interface with the monitor and to record at least
a portion of the received audio data packets to a record associated with
the voice interaction session.
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Claim 39 of the ‘324 patent continued:
In a similar manner as just discussed, the Court found that the term
“monitoring device” invoked MPF treatment and failed to provide
sufficient structure.
The Court found the claimed “device” to simply be a nonce term that was
operative to perform three functions:
To capture the audio data packets…
To identify a call…
To associate the audio data packets to a voice interaction session
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Claim 39 of the ‘324 patent continued:
The Court held that while the claims recite computer-implemented functions, the
specification of the ‘324 patent did not provide an algorithm for all the functions of
the monitoring device.
The Court first found the Plaintiff’s reliance on the Summary of the Invention, which
stated the claimed functions in a “conclusory manner”, to be insufficient disclosure
of an algorithm for the “identify” function.
Then, the Court found the Plaintiff’s reliance on identical portions of the
specification as support for the “identify” and “associate” functions as evidence
that the ‘324 patent lacked a description of how the device would perform the
claimed monitoring.
Further, the Court stated that “the term ‘monitoring device’ does not appear
anywhere in the specification much less with an associated algorithm. The failure to
even reference this device in the specification raises enough doubt about whether a
person of ordinary skill in the art could ‘understand what structure corresponds to
the means limitation.’”
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Claim 18 of the ‘386 patent:
18. A system to manage communications over a communications network
that includes an exchange, the system comprising:
a monitoring device configured to connect the system to the
communications network and to receive data packets from the
communications network;
an analysis module configured to receive an identifier tagged onto the
data packets so as to identify the data packets, such that the identified
data packets form at least a portion of the traffic stream and that data
packets are selected data packets;
a recorder configured to receive the selected data packets and to store
the selected data packets, such that the selected data packets are
stored data packets;
a data store configured to receive and to store the stored data packets
from the recorder, such that said at least a portion of the traffic stream
is stored;
a link between the exchange and the recorder configured to transfer
information related to the data packets from the exchange to the
recorder. 26
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Claim 18 of the ‘386 patent continued:
The Court found that the term “analysis module” involves the term
“module” which was the exact nonce word at issue in Williamson, and that
by adding the term “analysis” imparts no structure just as adding
“distributed learning control” failed to do so in Williamson.
The Court stated that the analysis module “is a black box nonce term that
performs a function consistent with the format of MPF claiming” because it
is configured to perform a single function (e.g., receive an identifier
tagged onto the data packets…)
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Claim 18 of the ‘386 patent continued:
The Court held that for similar reasons discussed above in relation to the ‘285 and ‘324 patents, and in Williamson (e.g., no algorithm or step-by-step procedure for the claimed function in the patent’s disclosure), Claim 18 was invalid.
The Court found that the Plaintiff’s reliance on a technical dictionary “reveals a lack of structure in the specification.”
Specifically, the Plaintiff attempted to impart structure into the claim by arguing that the “’analysis module’ contains inherent structure because the term ‘data analysis’ is defined in a technical dictionary as the ‘systematic investigation of data and their flow in a real or planned system.’”
The Court found this unavailing by stating that the “immediate resort to a technical dictionary for an entirely different term reveals the lack of structure in the specification… crediting the definition of ‘data analysis’ as the definition for the added term ‘analysis’ still only describes the claimed function at a high level but fails to offer corresponding structure…”
After shooting down the dictionary, the Court then reviewed the specification of the ‘386 patent and was unable to locate an algorithm performing the analysis module’s functions or steps.
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GoDaddy.com, LLC v. RPost Communs. Ltd. (D. Ariz.)
The GoDaddy.com case involved six patents, today we discuss U.S. Patent
No. 6,182,219 (the ‘219 patent), Claim 82.
The ‘219 patent discusses an apparatus and method of proving that the
sender of a dispatch sent the dispatch to a particular recipient at a
particular time and that the dispatch had particular content.
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Claim 82 of the ‘219 patent:
82. An information dispatch system in an electronic communication
network comprising;
…
(3) a processor for associating the content data with dispatch record
data which includes at least said time related indicia and an indicia
relating to the destination of the dispatch, to generate authentication
data which authenticate the dispatch and the contents of the dispatch;
and
(4) means for securing at least part of the authentication data against
tampering of the sender and the recipient;
wherein the processor is combined with the means for securing.
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Claim 82 of the ‘219 patent continued:
One issue before the Court was whether the term “processor” (1) failed to
recite sufficiently definite structure or (2) recites function without reciting
structure for performing that function.
In addressing the first part of the Williamson analysis, the Court stated
that “the Federal Circuit only requires…that the claim recite some
structure to avoid §112(6)…”
The Court stated “[w]hat is important is whether ‘processor’ is a term that
is understood to describe structure, as opposed to a term that is simply a
nonce word not recognized as the name of structure, and merely
substitutes for ‘means for.’”
The Court found that the term “processor” designates at least some
structure and supported this conclusion by citing multiple technical
dictionaries.
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Claim 82 of the ‘219 patent continued:
Continuing the Williamson analysis, the Court addressed whether the
processor “associates” and “generates” without reciting sufficient
structure for performing those functions.
The Court first noted that “a skilled artisan would not recognize
‘processor’ as a name of a sufficiently definite structure for ‘associating’
two different types of data in order to ‘generate’ a third class of data.
Rather, one of skilled in the art would understand ‘processor’ to mean a
general purpose computer…”
Thus, the recitation in the claim of a “processor” was deemed not
sufficient for performing the specifically recited functions, and further
disclosure was required from the specification.
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Claim 82 of the ‘219 patent continued:
The Court further stated that “the term ‘processor’ is different from claim
terms ‘circuit’ and ‘circuitry,’ which the Federal Circuit has found to denote
sufficiently definite structure to avoid application of §112(6).
The Federal Circuit has found that the term “circuit” coupled with a description in the
claims of the circuit’s operation generally conveys the structural arrangement of the
circuit’s components. See Mass. Inst. of Tech. & Elec. for Imaging, Inc. v. Abacus
Software (“MIT”), 462 F.3d 1344, 1354–56 (Fed. Cir. 2006); Linear Tech., 379 F.3d at
1320–21; Apex, 325 F.3d at 1374.
In contrast, the Court found the claimed "processor" does not convey “anything
about the internal components, structure, or specific operation of the
processor.”
Thus, the Court found that the term processor would not be understood by an
ordinarily skilled artisan as having sufficient structure for performing the
recited associating and generating functions, and therefore §112(6) was
invoked.
Nonetheless, in analyzing the specification, the Court found sufficient structure
(a particular micro-controller) and a specific algorithm (a recited formula),
thus the claim limitation was held to satisfy §112(6).
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Claim 82 of the ‘219 patent continued:
Turning to the “means for securing…” limitation, such limitation was
agreed upon by the parties to be subject to MPF construction.
The Court’s analysis of the “securing” functionality hinged on its finding
that “securing” was a “specific function performed by a special purpose
computer.” Thus, the Court analyzed the disclosed algorithms in the
specification of the ‘219 patent.
The Court found that the ‘219 patent disclosed four separate methods for
“securing,” and analyzed each individually.
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Claim 82 of the ‘219 patent continued:
In discussing the first of four methods, the Court stated:
“The first method discloses storage unit 54 as a ‘Write-Once-Read-Many (WORM)
device such as an optical disk or a Programmable Read-Only Memory (PROM)
device.’ Id. col. 7 ll. 46–48. As to the securing process, the specification explains
that controller 56 'stores’ and ‘retrieves’ the information from storage unit 54,
and ‘unsecures’ the information if it is ‘secured.’ Id. col. 7 ll. 59–col. 8 ll. 5.
Under Federal Circuit law, ‘[i]t is well settled that simply disclosing software . . .
without providing some detail about the means to accomplish the function, is not
enough.’ Function Media, 708 F.3d at 1318 (citation and quotations omitted).
This first method of ‘securing,’ however, does not simply disclose the generic
term ‘software,’ but provides particular types of software that inherently assure
that the data written on the device cannot be tampered with once it is written
on the device.”
This method was found to have sufficient disclosure.
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Claim 82 of the ‘219 patent continued:
Regarding the second method, the Court analyzed col. 7, ll. 41-58 of the ‘219
patent, which recited in part:
“The storage unit 54 is used for storing the information… may be enclosed within
a securable device…”
The second method was found to have insufficient disclosure because, as the
Court stated:
“The specification simply discloses that storage device 54 is ‘enclosed within a
securable device.’ … ‘219 Patent col. [7, ll. 49-50.] Such nonce terminology
merely discloses functional language without any form of structure.”
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Claim 82 of the ‘219 patent continued:
The third method was found to have insufficient disclosure because, as the
Court stated:
“The third disclosed method to ‘secure’ the authentication data via storage unit
54 is ‘it may be provided with read-only access privilege.’ ‘219 Patent col. 7 ll.
50–51. The specification devotes only one other sentence to this method: ‘[o]ne
embodiment of secure storage is that which has read-only privileges.’ Id. col. 9
ll. 56–67. Unlike the first disclosed method of storing the data on a WORM or
PROM device, the sole step of ‘[p]rovid[ing the data] with read-only privilege’
does not set forth a step-by-step procedure for how the claim’s function of
‘securing’ is to be performed.”
The Court stated that “the specification does not explain how the data is
‘provided’ with read-only access or who has access to the data. For these
reasons, the Court finds that this method fails to disclose a sufficient
algorithm.”
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Claim 82 of the ‘219 patent continued:
The fourth method was found to have sufficient disclosure because, as the
Court stated:
“The fourth method of ‘securing’ authentication data is ‘using a
compression, private or public key encryption or scrambling technique,
a password, or a combination thereof, such as those employed by the
widely used RSA encryption method, and by the PKZIIP(tm) program
from PKWARE Inc., Glendale, Wis. U.S.A., and where the ‘securing’
procedure, key or password are unknown to any interested party.’ The
Court finds that this method sufficiently describes an algorithm to
accomplish the claimed function of securing data against unauthorized
access.”
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SyncPoint Imaging, LLC v. Nintendo of Am. Inc. (E.D. Tex.)
During claim construction, the Court found the claimed subject matter
involving a “processor” to not invoke §112(6).
The analysis in this case yields a different result from that in
GoDaddy.com.
The patent-in-suit: U.S. Patent No. 6,275,214 (the ‘214 patent) describes a
system for remotely controlling a computer by optically tracking and
synchronizing a wireless optical pointer with a projected image of the
computer screen.
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Claim 24 of the ‘214 patent:
24. A computer presentation system for generating commands to
remotely control a computer based on a plurality of user selectable
properties of an optical cursor generated by a hand-held pointer and
projected on a screen displaying output from the computer, the system
comprising:
a camera for capturing an image of the output from the computer; and
a processor in communication with the camera for processing the image
to detect position of the optical cursor and at least one property of the
optical cursor and for converting the position and at least one property
to corresponding commands to control the computer and move an
internal cursor to a position corresponding to the optical cursor while the
optical cursor remains within the output displayed on the screen.
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Claim 24 of the ‘214 patent continued:
The Court stated that §112(6) does not apply for three reasons:
First, the Court stated that the term “processor” connotes sufficient
structure, citing the IBM Dictionary of Computing (10th ed. 1994):
(1) In a computer, a functional unit that interprets and executes
instructions. A processor consists of at least an instruction control
unit and an arithmetic and logic unit. (2) One or more integrated
circuits that process coded instructions and perform a task.
And citing Webster’s New World Dictionary of Computer Terms (5th ed.
1994):
(1) The CENTRAL PROCESSING UNIT of a computer.
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Claim 24 of the ‘214 patent continued:
Second, the Court found that Claim 24 recited the objectives and
operations of the processor in the “processor…for” limitation.
…for processing the image to detect position of the optical cursor and at
least one property of the optical cursor and for converting the position and
at least one property to corresponding commands to control the computer
and move an internal cursor to a position corresponding to the optical cursor
while the optical cursor remains within the output displayed on the screen.
Third, the Court stated that one of ordinary skill in the art would
understand the structural arrangements of the processor. (This position
relied upon extrinsic evidence from a Declaration of an expert in support
of Plaintiff’s construction position.)
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Farstone Tech., Inc. v. Apple Inc. (C.D. Cal.)
This case involves U.S. Patent No. 7,120,835 (the ‘835 patent) which
discloses using the resources of a computer system in a more effective way
so as to economize on system resources occupied by conventional
backup/recovery software.
The Court analyzed Claim 1 of the ‘835 patent and found the claim invoked
yet failed to satisfy §112(6) because the term “backup/recovery module”
was indefinite.
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Claim 1 of the ‘835 patent:
1. A computer equipment having a prompt access function, said
computer equipment comprising:
a processing system having at least one hardware resource with a
backup/recovery module, said backup/recovery module creating at least
one recovery unit to hold backup data; and
a displaying system for displaying backed up data of said processing
system, said backed up data of said processing system corresponding to
each of said at least one recovery unit, said displaying system having a
selecting means, said selecting means selecting a status corresponding to
said processing system at the time of creation of each of said at least
one recovery unit, said displaying system displaying said selected status;
wherein said at least one recovery unit respectively reflects a
corresponding status of said at least one hardware resource at the time
of creation of each of said at least one recovery unit, said at least one
hardware resource can be restored to status at the time of creation of
each of said at least one recovery unit.
44
45
Claim 1 of the ‘835 patent continued:
The Court first performed part 1 of the Williamson analysis on the term
“backup/recovery module.”
The Court found that the term “backup/recovery module” is in a format
consistent with traditional MPF claim limitations.
The prefix “backup/recovery” was found not to impart definite structure
into the term “module.”
While the specification of the ‘835 patent described the “backup/recovery
module” as within the hardware resource of the processing system, the
specification failed to impart any structural significance to the term.
The Court specifically stated “the claim does not describe how the
‘backup/recovery module’ creates a recovery unit to hold backup data in a
way that informs the structural character of the limitation…”
Therefore, the Court found the term “backup/recovery module” to invoke
MPF treatment.
45
46
Claim 1 of the ‘835 patent continued:
The Court then determined whether the specification disclosed sufficient
structure that corresponded to the claimed function.
The Court stated that “structure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history
clearly links or associates structure to the function relied upon in the
claim.”
The Court held that while the “backup/recovery module” is disclosed as
having to be performed by a special purpose computer, the absence of an
algorithm (or step-by-step procedure) for performing the steps performed
by the “backup/recovery module” rendered such limitation indefinite.
46
47
Claim 1 of the ‘835 patent continued:
The Court reviewed the ‘835 patent for disclosure of an algorithm but
found that the specification only recited the overall function itself.
For example, the Court found that the following sections of the
specification lacked the required disclosure of step-by-step functionality:
“The status corresponding to the processing system is a status of said computer
equipment at the time creating said corresponded recovery unit. The data
contained in the processing system corresponding to the recovery unit includes
configuration corresponding to the hardware resource and the backup data held
in the recovery unit respectively. The displaying system has a user-operating
interface.” See col. 4, ll. 44-50 of the ’835 patent.
“Upon the user selects a restore point under the DOS interface, the displaying
system 20 displays an option for the user to obtain outcome of recovery
operation corresponding to such restore point. If such restore point is selected,
the operating system is loaded. After the user confirms that the restore point is
the required restore point, the status corresponding to such restore point can be
set as a current status.” See col. 6, ll. 64-67 of the ‘835 patent.
47
48
Claim 1 of the ‘835 patent continued:
The Court stated that the descriptions in the specification “do not provide
how the recovery unit is actually created by the backup/recovery
module.”
The Court did not analyze the other term at issue: “processing
system” because the claim was already found indefinite.
On Jan. 9, 2017, the Supreme Court declined to entertain FarStone's
request to review the Federal Circuit’s revised standard for evaluating
whether patents involving functional claims are indefinite, leaving intact
the invalidation of the ‘835 patent.
48
49
Tele-Publishing v. Facebook (D. Mass)
During claim construction in this case, certain claims of U.S. Patent No.
6,253,216 (the ‘216 patent) were found to be invalid as indefinite because
the claims were not tied to a specific algorithm that gives instructions for
how to perform the claimed software functions. The Court found that the
claims were MPF claims that were unsupported by an algorithm.
The Court’s analysis of Claim 29 is representative of its finding that the
claimed “means to select” other remote users to whom the page-
creating remote user may wish to allow access to the personal page was
indefinite.
The ‘216 patent generally relates to providing a secure manner for
displaying personal information of a user to other computer network users
on a personal page of the user.
49
50
Claim 29 of the ‘216 patent:
In a networked computer system having a plurality of remote users, a
computer program product comprising computer useable medium having
computer readable program code to:
a) store profile information relating to each remote user, the profile
information being accessible to other remote users of the system;
b) provide a page-creating remote user with means to create a personal
page having personal information;
c) store attributes representing the personal information in the page-
creating remote user's personal page in one or more databases;
d) provide the page-creating remote user with means to select other
remote users to whom the page-creating remote user may wish to allow
access to the personal page;
…
50
51
Claim 29 of the ‘216 patent continued:
The parties disputed whether the specification provided the corresponding
structure for the “means to select” functionality.
Plaintiff proposed the following language for the recitation of the structure
to support the function:
“at least one Web page programmed to retrieve profile information of
other remote users and display that profile information for selection by
other remote users”
51
52
Claim 29 of the ‘216 patent continued:
Plaintiff cited to portions of the specification that describe the general
apparatus for providing a personal page to users. Specifically:
“Personal ads placed via the call centers 161-16i may be posted on a
clients web site via the server 54.” See col. 5, ll. 40-42 of the ‘216
patent; and
“An exemplary database structure useful with invention is illustrated in
FIG. 3. User Information Table 126 may be used by a PON [Personals
Online Network] system to store a variety of information relating to
users of the system.” See col. 7, ll. 31-34 of the ‘216 patent
See also cited col. 6, l. 6 – col. 7, l. 18 which discusses actions
performed by a remote user computer on a network.
52
53
Claim 29 of the ‘216 patent continued:
The Court reviewed the cited portions put forth by the Plaintiff and stated
that the only mention of searching, as implied in the “means to select”
step, is a statement:
“[t]he [Personal On-line Network] may provide searching facilities
which allow users of the system to search other users’ profiles in an
attempt to find a match.” Citing col. 7, ll. 16-18 of the ‘216 patent.
The Court held that “[t]his statement, along with the description of the
apparatus cited by [Plaintiff], does not adequately describe the structure
of the claimed function and does not contain the language [Plaintiff]
proposes for the structure.”
Thus, the Court found the claims reciting “means to select” were
indefinite because the “‘specification contains no description of the
structure or the process,’ in this case, the algorithm, that the system ‘uses
to perform the [means to select] function.”
53
54
Cases distinguishing Williamson:
Finjan, Inc. v. Proofpoint, Inc., 2015 U.S. Dist. LEXIS 162504 (N.D. Cal.
Dec. 3, 2015);
Collaborative Agreements, LLC v. Adobe Sys., 2015 U.S. Dist. LEXIS 161809
(N.D. Cal. Dec. 2, 2015); and
Triplay, Inc. v. Whatsapp, Inc., 2016 U.S. Dist. LEXIS 157680 (D. Del. Nov.
15, 2016).
54
55
Finjan, Inc. v. Proofpoint, Inc. (N.D. Cal.)
This case involved several patents-in-suit generally directed to securing
computers from malicious code.
At issue was the construction of Claim 1 of U.S. Patent No. 8,141,154 (the
‘154 patent) and whether claim recited MPF language.
55
56
Claim 1 of the ‘154 patent:
A system for protecting a computer from dynamically generated
malicious content, comprising:
a content processor (i) for processing content received over a network,
the content including a call to a first function, and the call including an
input, and (ii) for invoking a second function with the input, only if a
security computer indicates that such invocation is safe;
a transmitter for transmitting the input to the security computer for
inspection, when the first function is invoked; and
a receiver for receiving an indicator from the security computer whether
it is safe to invoke the second function with the input.
56
57
Claim 1 of the ‘154 patent continued:
The parties disputed whether the phrase “a content processor (i) for
processing …., and (ii) for invoking…” is MPF language that must be
construed under §112(6).
The Court summarized its analysis technique under Williamson by stating
that instead of presuming that the §112(6) does not apply when a term
does not use “means,” the Courts must now:
Ask whether the words of the claim are understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the
name for structure.
If a term lacks the words “means,” the presumption can be overcome,
but §112(6) will apply when a challenger demonstrates that the claim
term fails to recite sufficiently definite structure or else recites function
without reciting sufficient structure for performing that function.
57
58
Claim 1 of the ‘154 patent continued:
The Court found that the term “content processor” has a sufficiently
specific structure.
The Court supported its position by stating that the claim itself describes
how the content processor interacts with other components, which
provides the terms’ structural character.
The Court also found that the specification supported the structure and
function of the content processor:
“Gateway computer 405 receives content, such as web content, from a
network, over communication channel 420. Client computer 410 includes a
content processor 470, such as a web browser, which processes content
received from the network.” see col. 15, ll. 33-36 and FIGS. 2 and 3 of the ‘154
patent.
“[S]aid content processor (i) suspends processing of the content after said
transmitter transmits the input to the security computer, and (ii) resumes
processing of the content after said receiver receives the indicator from the
security computer.” See col. 17, ll. 32-49 and col. 18, ll. 7-22 of the ‘154
patent.
58
59
Claim 1 of the ‘154 patent continued:
The Court reasoned that “[u]nlike Williamson, where the term ‘module’
was ‘simply a generic description for software or hardware that performs a
specified function,’… here, the intrinsic evidence [the claim itself and the
specification] established the structural character of the ‘content
processor’ through its interactions with the system’s other components.”
Therefore, the Court held that §112(6) does not apply.
59
60
Collaborative Agreements, LLC v. Adobe Sys. (N.D. Cal.)
This case involved U.S. Patent No. 8,271,393 (the ‘393 patent), directed to
a system for facilitating secure network transactions of electronic
documents between two or more parties.
The claim terms at issue were:
“code segment for…” in claims 25 and 36; and
“computer readable medium encoded with a computer program” in
claims 49 and 60.
The threshold question was whether the terms constitute MPF limitations.
60
61
Claim 25 of the ‘393 patent:
a code segment for receiving one or more electronic documents and an identity validation at a server computer via a network from a client communications device of a first party to the transaction
…
a code segment for receiving registration information at the server computer via the network from the client communications device of a second party to the transaction wherein the registration information comprises the identity validation of the second party;
a code segment for assigning the transaction to an account on the server computer that is accessible via the network;
a code segment for posting the received electronic documents to the account on the server computer such that the client communications device of the second party can access the posted electronic documents via the network;
a code segment for providing the second party with access to the received electronic documents; and
a code segment for whenever an acceptance of any of the one or more electronic documents is received by the server computer from the client communications device of the second party, attaching the identity validation from the first party and the second party to the accepted one or more electronic documents.
61
62
Claim 25 of the ‘393 patent continued:
Turning first to the “code segment” instances in the claims, the Court
stated that the term “code segment” suggests some kind of structure as
evidenced by the Plaintiff’s provided dictionary definition – Microsoft Press
Computing Dictionary 96 (3d. 1997):
1. A memory segment containing program instructions. 2. A named and segregated
portion of a program’s code typically performing a specific class of operations. Code
segments in this sense are often loaded into memory as memory segments. The main
program segment is kept in memory, and auxiliary segments are loaded only when they
are required.
The Court then stated that the claim language provides a description as to
how each recited “code segment” operates.
62
63
Claim 25 of the ‘393 patent continued:
The Court stated that Claim 25 does not simply describe broadly phrased high-
level functions such as “receiving communications” or “coordinating the
operation of the streaming data module,” as in Williamson…
Rather, the Court found that Claim 25 describes the objective and operation of
the code segment as:
“receiving one or more electronic documents and an identity validation at a
server computer”
• The Court also found Claim 25 to describe the structural interactions among
the computer program’s code segment components:
“code segment for receiving one or more electronic documents . . . code
segment for posting the received documents . . . code segment for providing
the second party with access to the received documents . . . ”
63
64
Claim 25 of the ‘393 patent continued:
The Court equated the claim terms “code segment” to “circuit” from
Linear Tech. Corp. v. Impala Linear Corp., which was found to not invoke
MPF treatment.
Thus the Court held that the term “code segment” should not be treated
as a MPF limitation because:
“code segment” has structural meaning, as supported by the extrinsic
dictionary definition provided by the Plaintiff, and is therefore not a
“nonce” word; and
The claim language describes the code segment’s operation with a
degree of specificity not present in Williamson.
64
65
Claim 49 of the ‘393 patent:
A system for facilitating a transaction between two or more parties comprising:
a network interface;
one or more data storage devices;
one or more processors communicably coupled to the network interface and
the data storage devices; and
a non-transitory computer readable medium encoded with a computer program
communicably coupled to the processors to
(a) receive one or more electronic documents and an identity validation via
the network interface from a client communications device of a first party
to the transaction...
65
66
Claim 49 of the ‘393 patent continued:
Turning to the claim language “computer readable medium encoded with a
computer program,” the Court applied the same analysis it did for “code
segment” and reached the same conclusion.
In so holding, the Court:
Equated the terms “code segment” and “computer program” and found that
software was “still implicated.”
Noted that the claim language lacked the word “means”; and
Reasoned that the same analysis for “code segment” was largely applicable –
“software has some structural meaning, and the surrounding claim language
provides sufficient specificity as to how the software operates.”
The Court further stated that Linear Tech. Corp., not Williamson, governs
because “computer readable medium encoded with a computer program”
implicates not only software but also hardware; thus there is a strong
analogy to the “circuit” at issue in Linear Tech. Corp.
66
67
Triplay, Inc. v. Whatsapp, Inc. (D. Del.)
This case involved patents-in-suit generally directed to cross-platform
messaging technology.
Among the claim construction issues addressed in this case was whether
the terms “access block” and “media block” recited in Claim 1 of U.S.
Patent No. 8,332,475 (the ‘475 patent) and Claim 9 of U.S. Patent No.
8,874,677 (the ‘677 patent) should be construed as MPF claim elements.
The Court found they should not.
• Claim 1 of the ‘475 patent is representative.
67
68
Claim 1 of the ‘475 patent:
A system for message communication via a communication media between
one or more originating communication devices assigned to a sender and
one or more destination communication devices assigned to a receiver, the
system comprising:
a) an access block configured to receive, directly or indirectly, from at
least one originating communication device a message having initial
characteristics comprising, at least message format and an initial message
layout, and to transmit the message to at least one destination
communication device;
b) a media block operatively coupled to said access block and configured
to select, before transmitting, at least one message format and a message
layout for each of the at least one message formats fitting to each of said
at least one destination device, and to then convert at least said initial
message layout to the selected message layouts, said selection and
conversion being done in accordance with at least one criterion selected
from a group comprising:
…
68
69
Claim 1 of the ‘475 patent continued:
With regard to the term “access block,” the parties disputed whether the
term was purely functional. In addressing this concern, the Court analyzed
whether the term invoked MPF treatment under §112, paragraph 6.
The Court, in adopting Magistrate Judge Christopher J. Burke’s Report and
Recommendation, found the instant case to be distinguishable from
Williamson, holding that the ‘475 and ‘677 patents’ specifications included
significantly more detail than the specification of the patent-in-suit in
Williamson.
69
70
Claim 1 of the ‘475 patent continued:
The Court relied heavily on Apple v. Motorola, 757 F.3d 1286 (Fed. Cir.
2014) in its analysis, stating:
“[b]ecause software does not contain physical structures, persons skilled
in the art may understand a computer-implemented invention’s
structure ‘through, for example, an outline of an algorithm, a
flowchart, or a specific set of instructions or rules.’
A claim term relating to such an invention may also have significant
structure where there is a description of the term’s ‘operation, such as
its input, output, or connections.’
‘The limitation’s operation is more than just its function; it is how the
function is achieved in the context of the invention.’”
70
71
Claim 1 of the ‘475 patent continued:
The Court concluded that the term “access block” connotes sufficiently
definite structure to a person of ordinary skill in the art.
The Court stated:
“[I]t is important to keep in mind that when the patent is describing an
‘access block’ and what it does, it is articulating how certain hardware
and software (i.e., a computer configured in a certain way) is meant to
work…
[I]t would be ‘fruitless’ to expect such a description to, in all instance,
make reference to ‘traditional physical structure...’
That the term is ‘defined partly in terms of its function does not detract
from the definiteness of [the] structure it may connote.’”
71
72
Claim 1 of the ‘475 patent continued:
The Court concluded:
“[T]he patent not only describes what the role of the ‘access block’
plays in the overall message communication system and how the ‘access
block’ is connected to various other parts of that system – but…
[C]rucially, that the patent also describes what the required components
of an ‘access block’ are and how those components work to take in and
send out information.” (citations to specification omitted)
The Court, therefore, found that the §112, paragraph 6 does not apply to
the term “access block.”
For similar reasoning, the Court also found that MPF treatment was not
proper with regards to the term “media block.”
72
73
Functional Claiming In Software Patents
74
Functional Claiming In Software Patents
A claim term is functional when it recites a
feature “by what it does rather than by what it
is” (e.g., as evidenced by its specific structure or
specific ingredients). There is nothing inherently
wrong with defining some part of an invention in
functional terms. Functional language does not, in
and of itself, render a claim improper. Id.
The statute authorizes functional claiming.
MPEP §§ 2173.05(g) and 2181.
74
75
Claim Scope Impact
A claim invoking 112(f) “shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.” 35 U.S.C. 112(f).
Scope is limited “to only the structure, materials, or acts
described in the specification as corresponding to the
claimed function and equivalents thereof.” Williamson v.
Citrix, 792 F. 3d 1339, 1347 (Fed. Cir. 2015).
112(f) may limit claim scope
76
Disclosure Burden Impacts “Even if the specification discloses corresponding structure,
the disclosure must be of ‘adequate’ corresponding structure to achieve the claimed function.’” Williamson v. Citrix, 792 F. 3d at 1352.
For software, “[w]e require that the specification disclose an algorithm for performing the claimed function.” Id.
“Adequacy” is hard to reconstruct after-the-fact. Id. at 1354 (“The testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.”) Dictionaries
Prior Art
Expert testimony
112(f) may impose a higher disclosure burden
77
Written Description Impact
A claim satisfies the written description requirement
when “the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter
as of the filing date.“ Ariad v. Eli Lilly, 598 F. 3d 1336,
1351 (Fed. Cir. 2010) (en banc).
A claim invoking 112(f) “shall be construed to cover the
corresponding structure, material, or acts described in
the specification and equivalents thereof.”
112(f) may mean W/D requirement met
78
Enablement Impact
“[T]o be enabling, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’." In re Wright, 999 F. 2d 1557, 1561, (Fed. Cir. 1993).
Enablement serves the dual function of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention. Broad claim language is used at the peril of losing any claim that cannot be enabled across its full scope. MPEP 2164.06(a)(I).
112(f) constrains claim scope to the disclosure (and equivalents)
79
Nonce Word Claiming - Definiteness Impact
Functional term not per se indefinite. Cox Comm. Inc. v. Sprint Comm. Co., LLC, -- F.3d -- (Fed. Cir. Sept.
23 2016) “1. A method of operating a processing system to control a packet
communication system…”
DC: Invalid as indefinite. Structural limitation functionally described did not pass Nautilus.
FC: Reversed. “All of the asserted claims are method claims, and the point of novelty resides
with the steps of these methods, not with the machine that performs them.
‘“Processing system’ is merely the locus at which the steps are being
performed.”
“If ‘processing system’ does not discernably alter the scope of the claims, it is
difficult to see how this term would prevent the claims (…from serving their
notice function under § 112, ¶ 2.”
“Claims are not per se indefinite merely because they contain functional
language.”
80
Abstractness Inquiry Impact
“[T]there is a critical difference between patenting a
particular concrete solution to a problem and attempting to
patent the abstract idea of a solution to the problem in
general.” Electric Power Group v. Alstom, No. 2015-1778, slip
op. at 11 (Fed. Cir. 2016).
“A patent may issue ‘for the means or method of producing a
certain result, or effect, and not for the result or effect
produced.’” McRO v. Bandai Namco, No. 2015-1080, slip op.
at 23 (Fed. Cir. 2016) (citing Diamond v. Diehr).
Enfish v. Microsoft, No. 2015-1244, slip op. at 13-18 (Fed. Cir.
2016) (claims invoked 112(f), so focus was on specification).
112(f) may help with §101 eligibility
81
Is an Algorithm “Structure”?
For a software claim element invoking 112(f), the
specification must “disclose an algorithm for performing
the claimed function.” Williamson at 1352.
Before Williamson, “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.” Eon Corp v. AT&T
Mobility, 785 F. 3d 616, 622 (Fed. Cir. 2015).
Under Eon Corp., the algorithm was part of the
“structure,” urging against 112(f) application.
But cases since Williamson vary on this issue
82
Is an Algorithm “Structure”?
Media Rights Technologies v. Capital One Financial Corp.,
800 F.3d 1366 (Fed. Cir. 2015):
The claims do not use the term ‘compliance mechanism’
as a substitute for an electrical circuit, or anything else
that might connote a definite structure. Rather, the
claims simply state that the ‘compliance mechanism’
can perform various functions.
But -- Language of 112: “structure, material, or acts.”
83
Programmed computer functions require a
computer programmed with an “algorithm” to
perform the function
o An algorithm is a step-by-step procedure for accomplishing
a given result.
o Can be expressed in various ways “in any understandable
terms including as a mathematical formula, in prose or as a
flow chart, or in any other manner that provides sufficient
structure.”
o Amount of disclosure of an algorithm is analyzed on a case-
by-case basis
Programmed Computer Functions
84
Two types of computer-implemented functions:
Specialized functions: functions other than those commonly known in the art, often described by courts as requiring “special programming” for a general purpose computer or computer component to perform the function.
o Ex. means for matching incoming orders with inventory on a pro rata basis
Non-specialized functions: functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component
o Ex. means for storing data
Programmed Computer Functions
85
Specialized v. Non-specialized functions:
With respect to computer-implemented
functional claims, a "microprocessor or general
purpose computer lends sufficient structure only
to basic functions of a microprocessor. All other
computer-implemented functions require
disclosure of an algorithm." EON, 785 F.3d at 623
(Fed. Cir. 2015).
Programmed Computer Functions
86
• A specialized function must be supported in the specification by the computer and the algorithm that the computer uses to perform the claimed specialized function
o The default rule for § 112(f) programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function
o Disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope
o Claiming a processor to perform a specialized function without disclosing the internal structure of the processor in the form of an algorithm, results in claims that exhibit the ‘overbreadth inherent in open-ended functional claims’ Halliburton Energy Services
Programmed Computer Functions
87
• The corresponding structure in the specification
that supports a § 112(f) limitation that recites a
specialized function is:
o A general purpose computer or computer component
along with the algorithm that the computer uses to
perform the claimed specialized function
The disclosure requirement under § 112(f) is not
satisfied by stating that one of ordinary skill in the art
could devise an algorithm to perform the specialized
programmed function
Specialized Computer-Implemented Function
88
A § 112(f) specially programmed computer limitation is construed as:
• Means for performing a specialized function = [computer/component + algorithm described in the supporting disclosure for performing the entire claimed function]
• The “structure” in this case is the hardware plus the algorithm that the hardware uses to perform the function
• A generic reference to hardware alone or hardware with “software” is not sufficient support for specialized functions
Specialized Computer-Implemented Function
89
AGIS v. Life360, 830 F.3d 1341 (Fed. Cir. 2016):
Accused product -- mobile app designed to help families
stay connected
Claim term – “a symbol generator connected to [a] CPU
and [a] database for generating symbols on [a] touch
screen display screen.”
Specialized Computer-Implemented Function
90
AGIS v. Life360, 830 F.3d 1341 (Fed. Cir. 2016):
Unrebutted expert testimony that one reading the spec.
would know the symbol generator was a known class of
structures/software modules.
Fed. Cir.: Symbol=known; Generator=known; Symbol
generator=abstraction.
Specialized Computer-Implemented Function
91
AGIS v. Life360, 830 F.3d 1341 (Fed. Cir. 2016):
The term ‘symbol generator’ invoked 112(f) because it
fails to describe a sufficient structure and otherwise
recites abstract elements "for" causing actions.
It “is a term coined for the purposes of the patents-in-
suit. The term is not used in ‘common parlance or by
persons of skill in the pertinent art to designate
structure’ such that it connotes sufficient structure to
avoid the application of 35 U.S.C. § 112, ¶ 6.
Specialized Computer-Implemented Function
92
Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS
16549 (N.D. Cal. Feb. 6, 2017)
Claim term: “initial motion recognition module”
Specialized Computer-Implemented Function
93
Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS 16549 (N.D. Cal. Feb. 6, 2017)
Claim term: “initial motion recognition module”
the initial motion recognition module performing an initial recognition with respect to motion data acquired by a sensor, and providing m*Fs frames of motion data prior to the motion trigger point, motion data regarding the motion trigger point, and n*Fs-1 frames of motion data after the motion trigger point to the data storage module for storage, m and n denoting a predefined positive integer, and Fs denoting a sampling rate, and wherein one frame of motion data is a collection of data collected by various sensors at the same sampling moment.
Specialized Computer-Implemented Function
94
Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS
16549 (N.D. Cal. Feb. 6, 2017)
Challenger: “initial motion recognition module”
performs a specialized function and thus requires a
specialized computer, but no algorithm is disclosed to
connote structure.
Court: Williamson does not stand for the proposition
that module automatically “places it among terms such
as ‘means’” thus triggering the 112(f) presumption.
Specialized Computer-Implemented Function
95
Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist. LEXIS
16549 (N.D. Cal. Feb. 6, 2017)
Court: rebuttable presumption that 112(f) does not
apply.
There is adequate structure: look at claim language.
The specification “clearly identifies the initial motion
recognition module and describes its structure and the
process for carrying out initial motion recognition.”
The specification allows one of skill to understand
“what it does” and “how it does it.”
Specialized Computer-Implemented Function
96
• A non-specialized computer function can be adequately supported in the specification by a general purpose computer
o Applies to functions that can be accomplished by any general purpose computer without special programming
o It is only in rare circumstances that an algorithm need not be disclosed
o In those situations, make the record clear, if necessary, that the function is a non-specialized function and therefore no disclosure of an algorithm is required
o Note that a known prior art device (any general purpose computer) that performs the claimed function would anticipate the limitation
Non-specialized Computer-Implemented Function
97
• The corresponding structure in the specification that supports a § 112(f) limitation that recites a non-specialized function is:
o A general purpose computer or a known computer component that is recognized by those of ordinary skill in the art as typically including structure and basic programming, if needed, to perform the claimed function
o No disclosure of a specific algorithm is required
Sufficient supporting structure for a “means for storing data” could be a known memory device, such as a RAM, recognized by those skilled in the art as sufficient structure for storing data
Non-specialized Computer-Implemented Function
98
• Fitbit v. Aliph Corp., 2017 U.S. Dist. LEXIS 12657 (N.D. Cal. Jan. 27, 2017) [Wearable activity trackers]
o Claim terms: "[the second device / the first device / the other device / the at least one client device / the client device] sending a signal to a server that indicates the start of the pairing process"
o Neither the claims nor the specification provide much detail about this function; instead, it appears to be a simple transmission of a data signal from the client to the server. The specification makes only one passing mention of it and simply states that "the client tells the server to begin a pairing process."
Non-specialized Computer-Implemented Function
99
• Fitbit v. Aliph Corp., 2017 U.S. Dist. LEXIS 12657 (N.D.
Cal. Jan. 27, 2017) [Wearable activity trackers]
o Given the relatively simple nature of this function,
the "[second/other/client/first] device" is sufficiently
definite structure, as this term requires a device that
has the basic, general-purpose computing ability to
transmit a data signal.
Non-specialized Computer-Implemented Function
100
• Blast Motion, Inc. v. Zepp Labs, Inc., 2017 U.S. Dist.
LEXIS 16549 (N.D. Cal. Feb. 6, 2017)
o Claim term: “data storage module”
o Presumption not triggered.
o The term "data storage module" contains enough
structure in itself and as supported by the
specification.
o It is sufficient if the claim term is used in common
parlance or by persons of skill in the pertinent art to
designate structure, even if the term covers a broad
class of structures and even if the term identifies the
structures by their function.
Non-specialized Computer-Implemented Function
101
Functional Claiming for Software Exceedingly common.
Consider pros and cons of such functional claims in view
of Williamson.
Simply omitting the term “means” no longer provides the
protection of a “strong” presumption that §112(f) does not apply.
Indefiniteness will be a challenge if the specification does not
disclose particular structure, materials or steps that accomplish
the function or achieve the result.
Will go back to what a POSITA would understand the boundaries
of the claim are in the specific context of the art.
102
Benefits and Risks of Functional Claims
Benefits
Link to specification to avoid prior art.
Requires clear thinking for disclosures.
Statutory equivalents to what is linked to the
specification, but such statutory equivalents are
considered in the context of literal infringement,
not doctrine of equivalents.
Challenges/Limits
Narrowness and linking to the specification
Defining statutory equivalents
USPTO treatment
103
Benefits and Risks of Functional Claims
It is difficult to anticipate whether a functional recitation will be later interpreted to invoke 112(f). Reasons for allowance Reexamination I reissue Licensing negotiation Litigation
Potentially narrowing or invalidating the claims. e.g., under § 112, ¶2 for lack of corresponding
structure.
104
Best Practices: Drafting Stage
Specification: Assume that § 112(f) will apply.
Write specification to provide structure that is clearly linked to any functional recitations in the claims. Use the claim terms in the specification.
Disclose alternative structures: Programmed processor, circuitry, algorithms.
Disclose algorithm behind every "black box.“ Include a flow chart and associated description for each
element of the claim
105
MPEP 2181: Must Link in a §112(f) Claim
Structure disclosed in the specification is corresponding structure only if the
specification or prosecution history clearly links or associates that structure to
the function recited in the claim. Duty to link structure to function is the quid
pro quo for employing 112, paragraph 6.
“The structure disclosed in the written description of the specification is the
corresponding structure only if the written description of the specification or
the prosecution history clearly links or associates that structure to the function
recited in a means- (or step-) plus-function claim limitation under 35 U.S.C.
112(f) …The requirement that a particular structure be clearly linked with the
claimed function in order to qualify as corresponding structure is the quid pro
quo for the convenience of employing 35 U.S.C. 112(f) …and is also supported
by the requirement of 35 U.S.C. 112(b) …that an invention must be particularly
pointed out and distinctly claimed. … For a means- (or step-) plus- function
claim limitation that invokes 35 U.S.C. 112(f) …a rejection under 35 U.S.C.
112(b) … is appropriate if one of ordinary skill in the art cannot identify what
structure, material, or acts disclosed in the written description of the
specification perform the claimed function.”
106
MPEP 2181: No Single Means Clause Claims
A single means claim does not comply with the enablement
requirement of 112(a), and is not a proper 112(f) claim.
“A single means claim is a claim that recites a means-plus-
function limitation as the only limitation of a claim. …A
single means claim does not comply with 35 U.S.C.
112(a) …requiring that the enabling disclosure of the
specification be commensurate in scope with the claim under
consideration. … .Thus, a single means limitation that is
properly construed will cover all means of performing the
claimed function. A claim of such breadth reads on subject
matter that is not enabled by the specification, and
therefore, should be rejected under section 112(a) …. See
also MPEP § 2164.08(a).”
107
Best Practices: Drafting Stage
Claims: Avoid claiming “black boxes” e.g., modules, units (avoid disclosing) Instead, claim/disclose processors, circuitry, etc. For non-method software claims, one solution may be to claim a
processor executing instructions that when executed perform a function (rather than claiming a “module”)
Consider explicit “means” claim set
By claim differentiation, non-"means" claims may not invoke the statutory construction.
Consider CRM claim set
"A computer readable medium storing instructions for executing a method performed by a computer processor, the method comprising .... “
108
Best Practices: Drafting Stage
Avoid known nonce words when possible so that the
burden to overcome presumption will be on the
challenger.
If defending a nonce word, argue that the claim
describes how the element is interconnected with other
elements or otherwise operates.
109
Best Practices: Prosecution
Address Examiners' application of § 112(f)/¶6 Argue/amend until withdrawn; or Leave claims as-is and add new non-"means" claims
Consider Arguing without Examiner raising Supplement the “intrinsic” record dictionary definitions expert statements argument
Distinguish various claim sets
110
Best Practices: Post-Prosecution
Consider reissue to correct potential problems in
existing portfolio. Over-reliance on modules, units, etc.
111
Best Practices
Be deliberate in your decision to use functional claiming
Provide structural/systems/process details in
specification for functional claim recitations:
Provide structural/systems/process details in specification for
functional claim recitations
Alternative embodiments
Multiple examples
Varying claim strategies
Overlap substantially with Post-Alice eligibility practices
Be straight forward