On March 13 and 14, 2013, the Patent Trial and Appeal Board rendered three "informative" opinions in Ex parte Erol,1 Ex parte Lakkala2 and Ex parte Smith.3 All three opinions shared the same panel of five administrative patent judges, and in all three, the board issued new grounds of rejection on the basis that the specification failed to disclose sufficient corresponding structure to support a means-plus-function claim limitation. But the opinions are notable because in all three, the board treated a claim limitation to a processor" programmed, configured or adapted to perform a particular function as a means-plus-function limitation, despite the fact that the limitation did not use traditional "means for" language.
Many have recently attacked patents directed to computer-implemented inventions (sometimes referred to as software patents) on the belief that the scope of such patents should be more severely limited, or that such patents should be altogether abolished. The PTO and a number of courts have recently wrestled with these patents, primarily from the perspective of statutory subject matter. In Erol, Lakkala and Smith, the board took the opportunity to limit the scope of computer-implemented inventions through means-plus-function treatment.
Patent applicants routinely claim computer-implemented inventions in the manner at issue in Erol, Lakkala and Smith, and most often without the intent of invoking means-plus-function treatment. In 2012, for example, the PTO issued 9,337 patents in Class 709,4 in which the applications at issue in Lakkala and Smith are classified. Almost 44% (i.e., 4,103) of these patents include claims that recite the term "processor." To many of these and other patentees, as well as many applicants currently before the PTO, the board's decisions will undoubtedly come as an unwelcome surprise.
Means-Plus-Function Claiming. Under former § 112, ¶ 6 and now § 112(f) of the U.S. Patent Act, a patent applicant may express an element of their claimed invention "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof."5 According to the statute, elements expressed in this manner are "construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."6 This is known in more common parlance as means- or step-plus-function claiming.
For a number of years, patentees have generally disfavored the practice of means-plus-function claiming as being overly restrictive or limiting. The statute serves to restrict elements drafted in functional terms to those corresponding structures, materials or acts disclosed in the specification and their equivalents.7 For a claim limitation drafted in means-plus-function format, the specification must clearly disclose corresponding structure to satisfy the requirement that the claim particularly point out and distinctly claim the invention.8 And literal infringement of a means-plus-function limitation requires that an accused device employ structure that is identical to or the equivalent of the disclosed structure, and it must perform the identical function specified in the claim.9
More recently, the Federal Circuit has addressed computer-implemented inventions and means-plus-function claiming. In In re Alappat,10 the court found that a general-purpose computer programmed to perform a particular function in effect creates a special-purpose computer. Then in WMS Gaming, the court found that in a means-plus-function limitation supported by a general-purpose computer programmed to carry out an algorithm, the corresponding structure that must be disclosed is the thereby created special-purpose computer including general-purpose computer and algorithm.11
The term "means" is the hallmark of a means-plus-function limitation, and its use in a claim limitation creates a rebuttable presumption that § 112(f) applies.12 Conversely, failure to use the term "means" creates a rebuttable presumption that § 112(f) does not apply.13 In either instance, rebutting the presumption depends "on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of [§ 112(f)]."14 A claim limitation that uses the term "means" in combination with a function, but then further elaborates sufficient structure, material, or acts within the claim itself to perform entirely the recited function, may avoid means-plus-function treatment. On the other hand, a limitation that does not use the term "means" may nonetheless be treated as means-plus-function if the limitation "fails to ‘recite sufficiently definite structure' or else recites a ‘function without reciting sufficient structure for performing that function.'"15
The Board's Informative Opinions. Erol, Lakkala and Smith each called for the board to consider claims directed to a computer-implemented invention. But in each case, the appellant received more than they bargained for as the board issued a new ground of rejection. The board found that claims reciting a "processor" called for means-plus-function treatment, and that the respective specifications failed to disclose the requisite corresponding structure, thereby rendering the claims indefinite for failing to particularly point out and distinctly claim the invention.
In Erol, the board considered a claimed system including "a reader adapted to read a machine readable identifier," and "a processor adapted" to perform a number of particular functions. Lakkala centered on a claimed user device including "a memory device for storing a program," and "a processor in communication with the memory device" and "configured with the program to" perform a number of particular functions. Similarly, the board in Smith focused on a claimed computer system including "memory," and "a processor in communication with the memory" and "programmed to" perform a number of particular functions.
In all three cases, the board construed the "processor" limitations as invoking means-plus-function treatment, despite the fact that none of the claims at issue used the term "means." In each case, the board acknowledged that the processor limitation carried a rebuttable presumption against means-plus-function treatment, but the board found the presumption overcome.
In support of its conclusion, the board looked to the dictionary definition of "processor," and found that one skilled in the art would interpret the term to mean a (general-purpose) computer, central processing unit (CPU) or program that translates another program into an acceptable form (by the computer in use).16 In each case, the board found that its definition supported construction of "processor" as a nonce word devoid of sufficient structure for performing one or more of the functions attributed to the processor. And the board did not find in any case a structural modifier to elevate the term above simply a nonce word.
The board looked to whether functions attributed to the recited processors were of the sort typically performed by a commercial off-the-shelf processor, which according to the board, weighs against means-plus-function treatment. But in each case, the board found at least one function that did not qualify as a function performed by a typical off-the-shelf processor. In Erol, board focused on the processor being adapted to "perform an action." In Lakkala, the claimed user device recited the processor being configured to "control the collection of content data," and "control creation of metadata." And in Smith, the claimed computer system recited the processor being programmed to "generate an opinion timeline."
The board further found that none of the claims at issue recited the processor connected to any structure in a manner sufficient for performance of its particular functions. The board here recognized that each claim recited its processor connected to a structure (i.e., "reader," "memory," "memory device"), but again focused on the sufficiency of the connected processor for performing the specific functions attributed to the processor in the claim (i.e., "perform an action," "control the collection of content data," "control creation of metadata," "generate an opinion timeline"). And finally, the board contrasted the term "processor" from "circuit," which has in the past been found to connote sufficient structure.
"Processor" as a Substitute for "Means." The board's decisions in Erol, Lakkala and Smith may certainly be seen as noteworthy. The board in fact intended as much by designating their opinions as "informative" – opinions that while not binding, are intended to illustrate norms of the board decision-making. But did the board apply a proper analysis to reach a proper conclusion.
The board correctly considered how one skilled in the art would interpret the term "processor." The board settled on a definition of "processor" as a computer, CPU or program that translates another program. But even given this definition, it's difficult to conclude as the board did, that "processor" is simply a generic structural term along the likes of "means," "element" or "device," or a coined term without a clear meaning such as "widget" or "ram-a-fram."17
As a computer or CPU, the term "processor" clearly connotes at least some structure. In Lakkala, in fact, the board cited the Microsoft Computer Dictionary for the proposition that "[b]y definition, the CPU is the chip that functions as the ‘brain' of a computer."18 According to this definition, a CPU is a chip, i.e., integrated "circuit," and a computer includes such an integrated circuit. And as recognized by the board, the terms "circuit" and "circuitry" have been held to connote structure.19
Likewise, a number of courts have held that computer program code connotes structure. For example, in Altiris, Inc. v. Symantec Corp., the Federal Circuit noted that "‘commands' represent structure (in the form of software)." 20 In another example, in Aloft Media, LLC v. Adobe Systems Inc., a district court found "computer code" for performing a specific function as being analogous to a "circuit" for performing a specific function, and found that such claim limitations include sufficient structure to avoid means-plus-function treatment.21
The board's decisions in fact are less focused on whether the term "processor" connotes at least some structure, only that the term did not connote sufficient structure for performing particular functions without additional programming. The decisions appear to require that the claims at issue recite a structure more specific than a "processor" for performing particular functions. But the Federal Circuit has not required a specific structure to avoid means-plus-function treatment. Rather, the Federal Circuit has held that "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."22
One could easily argue that the term "processor," although broad, covers a class of structures that includes not only a general-purpose processor but also a specific-purpose processor. And that by further specifying a particular function performed by the "processor," the claims in fact call to mind a specific-purpose processor. The board's decisions even seem to support this proposition by concluding that particular functions of the claims at issue (i.e., "perform an action," "control the collection of content data," "control creation of metadata," "generate an opinion timeline") are not those of the type typically performed by a general-purpose processor.
The decisions suggest a requirement that the claimed processor, to avoid means-plus-function treatment, includes a level of structural detail on par with that required of corresponding structures supporting a means-plus-function limitation. But here, the board appears to confuse the threshold issue of sufficient structure to avoid means-plus-function treatment, with the issue of sufficient corresponding structure to support a means-plus-function limitation. The two standards are not the same.23 A computer-implemented means-plus-function limitation may require disclosure of both a general-purpose computer and the algorithm that transforms it to a special-purpose computer. But the Federal Circuit has not required the same specificity to avoid means-plus-function treatment, particularly in the case of a claim limitation carrying a presumption against means-plus-function treatment. A claim limitation without "means" terminology need not recite a specific structure to avoid means-plus-function treatment, as long as it uses a term recognized by those skilled in the art as designating structure.
The board's analysis in Erol, Lakkala and Smith illustrates the confusion in standards. In each case, the board cited In re Katz Interactive Call Processing Patent Litigation,24 for the proposition that a claim limitation reciting functions of the type typically performed by an off-the-shelf processor weighs against means-plus-function treatment. But Katz did not address not whether the claims at issue required means-plus-function treatment; the claims were drafted in "means" format and taken as means-plus-function. Rather, Katz addressed the sufficiency of corresponding structure supporting a means-plus-function limitation. To this point, the Federal Circuit found that functions typically performed by a general-purpose computer without special programming need not be supported in the specification by a specific algorithm.
The board's attempt to distinguish the facts at issue with those in other cases in which the Federal Circuit has declined to impart means-plus-function treatment likewise appears unavailing.
In Inventio AG v. ThyssenKrupp Elevator Americas Corp.,25 the parties disputed whether the term "computing unit," construed as a computer, connoted sufficient structure to avoid means-plus-function treatment. Despite ThyssenKrupp's argument that a general processor without more should not avoid means-plus-function treatment, the Federal Circuit found "computing unit" sufficiently structural. According to the court, the claims recited the computing unit connected to and interacting with a modernizing device (held structural) and floor terminals of an elevator system. The specification described the computing unit as a computer that stored and executed a computer program product, which the court earlier in its opinion noted performed an evaluation function attributed to the computing unit in the claim at issue.
The board distinguished Inventio on the basis that the claimed processor, even connected to structure, still lacked sufficient structure to perform particular recited functions. But nowhere did the court in Inventio find that the claimed computing unit performed its recited evaluation function by connection with the modernizing device and floor terminals. Rather, the court explicitly accepted that the computing unit performed at least some of its recited functions by execution of a computer program product. But nowhere did the board address this aspect of the court's decision.
In LG Elecs., Inc. v. Bizcom Elecs., Inc.,26 the Federal Circuit found a "control unit" including a CPU and partitioned memory sufficiently structural to perform the recited function of "controlling [a] communication unit." The board in Erol, Lakkala and Smith distinguished LG Electronics on the basis that particular functions attributed to the claimed processor could not be executed by a general purpose computer without additional programming. But nowhere did the court in LG Electronics find that the claimed control unit could perform the recited controlling function without additional programming.
The claims at issue in Erol, Lakkala and Smith clearly carried a presumption against means-plus-function treatment. One may rightfully question whether the board gave proper deference to the presumption. The board no doubt went to great lengths to overcome the presumption. But one may equally question whether their analysis properly lead to the conclusion that the term "processor" is so devoid of structure as to amount to nothing more than a substitute for the term "means."
Conclusion. Many will no doubt welcome the board's decisions in Erol, Lakkala and Smith. In recent comments to the PTO, Google in particular championed the decisions.27 Google and many others have proposed universally limiting the scope of computer-implemented inventions through means-plus-function treatment. The harder part is justifying means-plus-function treatment of claims that carry a presumption against such treatment, and in a manner consistent with the statue and case law.
1 Appeal No. 2011-001143, Appl. No. 11/461,109 (Pat. Trial & App. Bd. 2013).
2 Appeal No. 2011-001526, Appl. No. 10/949,568 (Pat. Trial & App. Bd. 2013).
3 Appeal No. 2012-007631, Appl. No. 12/579,383 (Pat. Trial & App. Bd. 2013).
4 Electrical Computers and Digital Processing Systems: Multicomputer Data Transferring.
5 35 U.S.C. § 112(f).
7 Personalized Media Communications v. Int'l Trade Comm'n, 161 F.3d 696, 703 (Fed. Cir. 1998).
8 Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003).
9 WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1347 (1999), quoting Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).
10 33 F.3d 1526 (1994).
11 184 F.3d at 1348-49.; and see Aristocrat Techs. Australia v. International Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).
12 Personalized Media Communications, 161 F.3d at 703.
13 Id. at 703-04.
14 Id. at 704.
15 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002), quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).
16 According to the board, each of the specifications of the applications at issue supported the definition. Erol's specification described its processor as hardware, software or combination of hardware and software that execute software. Lakkala's specification did not describe its processor but instead described a CPU. Smith's specification described its processor by non-limiting examples to a CPU, graphics processing unit (GPU) or both.
17 See Personalized Media Communications, 161 F.3d at 704 (finding the term "detector" sufficient structure because the term is more than a generic structural term and is not a coined term).
18 Appeal No. 2011-001526, slip op. at 5-6, quoting Microsoft Computer Dictionary 92 (5th ed. 2002).
19 Id. at 12-13, citing Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354-56 (Fed. Cir. 2006); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1374 (Fed. Cir. 2003)
20 318 F.3d 1363, 1376 (Fed. Cir. 2003).
21 570 F.Supp.2d 887, 897-98 (E.D. Tex. 2008). See also Affymetrix, Inc. v. Hyseq, Inc., 132 F.Supp.2d 1212 (N.D. Cal. 2001) (finding that "computer code" connotes sufficient structure to avoid means-plus-function treatment); and Rowe Int'l Corp. v. Ecast, Inc., 586 F.Supp.2d 924 (N.D. Ill. 2008) (finding that memory including "instructions" for performing specific functions connotes sufficient structure to avoid means-plus-function treatment).
22 Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359-60 (Fed. Cir. 2004).
23 See Markem-Imaje Corp. v. Zipher Ltd., 2011 WL 5837087, at *4 n.7 (D. N.H. Nov. 21, 2011) ("The structural disclosure required in the specification when a party chooses to employ means-plus-function claiming is not the same structural disclosure required to avoid means-plus-function treatment.").
24 639 F.3d 1303 (Fed. Cir. 2011).
25 649 F.3d 1350 (Fed. Cir. 2011).
26 453 F.3d 1364 (Fed. Cir. 2006), rev'd on other grounds, Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008).
27 Comments of Google Inc. at 9, In re: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents (Apr. 15, 2013) (No. PTO-P-2012-0052).
Originally published by Bloomberg Finance L.P. Reprinted with permission. The opinions expressed are those of the author.