functional claiming for software patents: leveraging recent...

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.

5

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

6

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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7

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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8

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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9

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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10

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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11

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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12

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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13


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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14


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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15


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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16


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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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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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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19


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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20


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…”

20

21


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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22


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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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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24


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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25


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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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

27


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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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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30


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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31


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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32


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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33


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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34


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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35


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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36


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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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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38


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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39

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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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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41


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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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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43

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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44


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.

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45


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.

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46


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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


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).


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


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


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.”


90


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.


91


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.


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”


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.


94


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.


95


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.”


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


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."


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.


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.


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).”

https://mpep.uspto.gov/RDMS/MPEP/current











107


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


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

functional claiming for software patents: leveraging recent...

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