Are Means-Plus-Function Claims Reasonably Certain to Require Tables of Support?

Are Means-Plus-Function Claims Reasonably Certain to Require Tables of Support?

David Orange

The most likely victims of the Supreme Court’s Nautilus v. Biosig decision appear unaware of their fate. When the Court explained that patent claims must be more than merely “amenable to construction,” but rather must provide “reasonable certainty” in order to meet the requirements of the second section of 35 U.S.C. §112, it is actually claims invoking the sixth section of this statute, better known as means-plus-function claims, that could be invalidated first. Means-plus-function claims are at risk for exactly the reasons that attorneys include them: there is flexibility in matching the claim element to examples from the patent. The flexibility of means-plus-function claims is now on a collision course with the new reasonable certainty standard. Patent drafters seeking the protection of old means-plus-function standards may be creating the very “zone of uncertainty” that Nautilus prohibits. Without new case law, practitioners may not understand how to draft valid means-plus-function claims going forward. This paper considers both legal and practical considerations to forecast how the Patent Trial and Appeal Board will guide applicants.

Rather than stating a combination of structural claim elements, a means-plus-function claim allows the applicant to describe claim elements in terms of what they do instead of what they are. For example, a means-plus-function claim may specify that elements are connected by a “fastening means” instead of stating that one can choose an example of a “fastening means,” such as a button and hole arrangement or a rivet. Determining the scope of a means-plus-function claim is a two-step analysis. First, the claim element is analyzed to determine whether it is a means-plus-function claim element. The second step is to review the written description and figures for examples of structure to match to the claim element. Both steps of this test face new concerns under the Nautilus standard.

Means-plus-function claims have generally been declining in popularity, but still have supporters. Fans of means-plus-function claims argue that the scope of equivalents to a means-plus-function claim is more likely to survive summary judgment because it is a factual question, that courts may broaden the scope of these claims by changing how they are interpreted, and that (for attorneys and agents at least), it’s another reason to bill a client. Professor Dennis Crouch, of the University of Missouri notes that this type of claim is more popular with foreign applicants than with domestic applicants. One speculates that this may be because analogous claims have more breadth in foreign jurisdictions.

This paper begins by arguing that Nautilus v. Biosig has raised the requirement for definiteness. Logically, Nautilus’s heightened standard applies to the threshold question of whether means-plus-function analysis is invoked, potentially invalidating patents before claims are even interpreted. The need for guidance on reasonable certainty is most pressing for means-plus-function claims that are under examination. This paper proposes requiring applicants to provide a table of support in the original written description for means-plus-function elements of a patent. Including this table in the original written description provides the required clarity to both the first and second steps of the means-plus-function analysis. Conveniently for the Patent Trial and Appeal Board, this required clarity allows it to provide decisions that are more “just, speedy, and inexpensive.”

98 J. Pat. & Trademark Off. Soc’y 809(2016)

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