Avoiding Invocation of 35 U.S.C. § 112(f)

By Ambar P. Nayate, Principal, Shumaker & Sieffert, P.A.

The Federal Circuit in Media Right Technologies, Inc. v. Capital One Financial Corp.[1] found that although the term “compliance mechanism” in the claims of U.S. Patent No. 7,316,033 (the “033 Patent”) did not recite “means-for” language, the “compliance mechanism” still invoked 35 U.S.C. § 112(f).  The Federal Circuit then found that because there was insufficient description of structure or algorithms in the specification for supporting “compliance mechanism,” the claims were indefinite, and affirmed the district court decision that the claims are invalid under 35 U.S.C. § 112(b).   Media Rights appealed the Federal Circuit decision to the Supreme Court and at the time of this writing the Supreme Court has not granted a writ of certiorari.   

For any reader unaware, 35 U.S.C. § 112(b) or 112(f) are America Invents Act (AIA) citations, and 35 U.S.C. § 112, second paragraph or 112, sixth paragraph are pre-AIA citations.  This paper uses these citations interchangeably.

In reaching the conclusion that “compliance mechanism” invokes 35 U.S.C. § 112(f), the Federal Circuit relied on its reasoning from Williamson v. Citrix.[2]  For instance, the Federal Circuit, citing Williamson, stated that “[b]ut this presumption against the application of § 112, ¶ 6 to a claim term lacking the word ‘means’ can be overcome if a party can ‘demonstrate that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.[3]

Notably, in Williamson, the Federal Circuit removed the strong presumption that a claim feature that does not recite the word “means” does not invoke § 112(f).  In Williamson, the Federal Circuit stated that “[o]ur consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, para. 6.[4]”  The Federal Circuit, in Williamson, then set out the new standard for when § 112(f) is invoked: “[t]he standard is 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.[5]

In Media Rights, Media Rights conceded that “compliance mechanism” has no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure.[6]  In an effort to avoid invocation of §112(f), Media Rights argued that “compliance mechanism” should be found to be a structural term for the same reasons that “modernizing device” was found to be a structural term in Inventio AG v. Thyssenkrupp Elevator Americas Corp.[7]  The Federal Circuit found this line of argument unpersuasive because “mechanism” does not connote identifiable structure and nothing in the written description of the ‘033 Patent adds sufficiently to the meaning of the term’s structure.[8]  On this basis, the Federal Circuit concluded that the claims of the ‘033 Patent, all of which include the term “compliance mechanism,” invoke 35 U.S.C. § 112(f).

The Federal Circuit then turned its attention to whether the claims comport to the requirements of 35 U.S.C. § 112(b).  The Federal Circuit stated: “[b]ecause ‘compliance mechanism’ is a means-plus-function term, we now must ‘attempt to construe the disputed claim term by identifying the corresponding, material, or acts described in the specification to which the claim term will be limited.[9]  In determining whether the claims are definite under 35 U.S.C. § 112(b), the Federal Circuit, citing Robert Bosch[10], stated “[i]f we are unable to identify any corresponding structure, material, or acts described in the specification, the claim term is indefinite.[11]

In its analysis, the Federal Circuit noted that “[b]ecause these functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor.[12]”  To be definite, the requirement is that the specification disclose an algorithm for performing the claimed invention, where the algorithm can be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.[13]

In this case, all sides agreed that the “compliance mechanism” performs four functions.[14]  However, the Federal Circuit found that “the specification fails to adequately disclose the structure to perform all four of its functions,[15]” and affirmed the district court’s grant of judgment of invalidity as to the claims.[16]

It should be possible for a Court to find that a claim not meant to invoke § 112(f), but which still does invoke § 112(f), comports to the requirements of § 112(b).  However, the best way to avoid the issue of indefiniteness is by avoiding invocation of § 112(f) altogether for claims that the patentee does not want to invoke § 112(f). 

With this backdrop, patent practitioners are left in a bit of a bind in determining how to craft claims that will not invoke § 112(f) but which are also not so narrow that they can be easily designed around.  One place patent practitioners can turn to is MPEP § 2181(I)(A), which provides a helpful list of words that the Federal Circuit has found to not invoke 35 U.S.C. § 112(f).  Patent practitioners should consider using such terms.  In particular, MPEP § 2181(I)(A) states:

The following are examples of structural terms that have been found not to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “circuit,” “detent mechanism,” “digital detector,” “reciprocating member,” “connector assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.” See Mass. Inst. of Tech., 462 F.3d at 1355-1356, 80 USPQ2d at 1332 (the court found the recitation of "aesthetic correction circuitry" sufficient to avoid pre-AIA 35 U.S.C. 112, paragraph 6, treatment because the term circuit, combined with a description of the function of the circuit, connoted sufficient structure to one of ordinary skill in the art.); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, 72 USPQ2d 1065, 1071 (Fed. Cir. 2004); Apex,325 F.3d at 1373, 66 USPQ2d at 1452; Greenberg, 91 F.3d at 1583-84, 39 USPQ2d at 1786; Personalized Media, 161 F.3d at 704-05, 39 USPQ2d at 1786; CCS Fitness, 288 F.3d at 1369-70, 62 USPQ2d at 1664-65; Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881, 56 USPQ2d at 1839; Al-Site Corp. v. VSI Int’l, Inc.,174 F.3d 1308, 1318-19, 50 USPQ2d 1161, 1166-67 (Fed. Cir. 1999).

For computer-implemented inventions, patent practitioners may wish to consider using the term “circuit” or “circuitry,” when appropriate.  Circuit or circuitry has consistently been found to be term that connotes structure.  Many patent practitioners may consider “processor” to be a structural component, particularly if a general purpose processor would be capable of performing the claimed functions.[17]  If the claims recite features that cannot be performed by a general purpose processor, intrepretation to invoke § 112(f) is a possibility.  On this point, the PTAB has published some informative decisions[18] for cases where the term processor was interpreted to invoke § 112(f).  In these decisions, the PTAB raised a new grounds of rejection that the claims failed to meet the requirements of § 112(b) after concluding that the term “processor” invokes § 112(f). 

In Ex Parte Lakkala, the PTAB contrasted the term “processor” and “circuit.”  The PTAB stated: “[t]he term ‘processor’ in claim 27 is also different from the claim terms ‘circuit’ and ‘circuitry,’ which have been held to denote sufficiently definite structure to avoid the application of § 112, sixth paragraph.[19]”  The PTAB then stated: “[t]he term ‘circuit’ coupled with a description in the claims of the circuit’s operation typically conveys the structural arrangement of the circuit’s components.[20]”  Therefore, at least with the Patent Office, reciting a circuit or circuitry should avoid an interpretation that the claims invoke § 112(f).

While “circuit” or “circuitry” may help avoid interpretation under § 112(f), it is advisable to provide a detailed description with sufficient structure and, as applicable, sufficient description of algorithms, to avoid a finding of indefiniteness in violation of § 112(b).

The Federal Circuit seems to provide some helpful hints for patent practitioners when drafting the claims and specification to avoid invocation of § 112(f).   For instance, the Federal Circuit has presented the following steps for analyzing functional claim language:  (1) identify term being claimed functionally, (2) determine whether the term is understood by one of ordinary skill in art to connote structure, (3) if no, determine whether the claim itself provides sufficient features to connote structure, (4) if no, determine whether specification and figures provide detailed definition and description that one of ordinary skill in the art concludes that the term connotes structure, (5) if no, conclude that the claim invokes § 112(f), and determine if the claim is definite under § 112(b). 

In drafting claims, patent practitioners should stop to identify  terms that may be considered functional.  Terms that precede “configured to,” “adapted to,” or present participles (“ing” words) may be candidates for functional interpreation.  Next, patent practitioners should consider whether sufficient structure for such terms has been described in the specification and, where applicable, the drawings. 

For example, the Federal Circuit, in Media Rights, stated that “[t]he written description only depicts and describes how what is referred to as the ‘copyright compliance mechanism’ is connected to various parts of the system, how the ‘copyright compliance mechanism’ functions, and the potential–though not mandatory–functional components of the ‘copyright compliance mechanism.’[21]  FIG. 5B of the ‘033 Patent illustrates interconnection of copyright compliance mechanism (CPP) 300 to the other components of the system.  FIG. 3 of the ‘033 Patent illustrates CPP 300 in greater detail.

The Federal Circuit seemed to find that the ‘033 Patent was indefinite in describing structure because the prose of the ‘033 Patent that described the modules of CPP 300 merely described the functions that these modules perform.  The Federal Circuit found no structure for how the modules perform the functions.  The Federal Circuit stated: “[n]one of these passages [referring to passages cited by Media Rights that describe FIGS. 3 and 5B], however, define ‘compliance mechanism’ in specific structural terms.”

There is no direct discussion in Media Rights about what the Federal Circuit would have considered as “specific structural terms.”  However, hints can be gleaned from the treatment of Media Rights’ attempt to analogize “compliance mechanism” with “modernizing device” of Inventio.  The Federal Circuit agreed that “Media Rights is correct that the Court in Inventio considered how the ‘modernizing device’ was connected to other claimed components of the system,” but then stated: “this description alone was not sufficient to avoid the application of § 112, ¶ 6.[22]”  The Federal Circuit clarified that “it was the specification’s disclosure regarding how the ‘modernizing device’ and its internal components operated as a circuit, which we had recognized in prior cases to connote sufficient structure, that was the basis for this Court’s conclusion that ‘modernizing device’ was not a means-plus-function term.[23]” (Emphasis in original).

It may be helpful to illustrate, in the drawings and detailed description, how particular components operate together.  For example, the patent practitioner may describe what component is connected to what other component, what component received data from what component, what the data is that is received, and what are the operations performed by each of the components to perform respective functions. 

In Williamson, the Federal Circuit first stated that “[a]lthough the ‘distributed learning control module’ is described in a certain level of detail in the written description, the written description fails to impart any structural significance to the term.[24]”  Describing how components structurally interconnect, as well as how they functionally inter-operate, may help in avoiding this issue highlighted in Williamson.

However, the Federal Circuit in Williamson then went on to say:

“[w]hile portions of the claim do describe certain inputs and outputs at a very high level (e.g., communications between the presenter and audience member computer systems), the claim does not describe how the ‘distributed learning control module’ interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation-in-question or otherwise impart structure to the ‘distributed learning control module’ as recited in the claim.[25]

Accordingly, one way to save the claim from § 112(f) interpretation may be to add more structure directly into the claim, where possible.  Care should be taken, of course, as including superfluous features can adversely impact claim scope and invite design-arounds.

However, there may be some freedom for certain cases where adding more in the claim about the interaction of components can avoid invoking § 112(f).  For example, when describing a software-implemented invention, patent practitioners may consider reciting the interaction or inter-relatinship between a processor and memory in the claims.  After the PTAB issued its decision in Ex parte Erol (one of the four informative cases), the Applicant in that case amended the claims to recite “one or more modules stored on a memory and executable by the one or more processors, the one or more modules configured to….”  In response, the Examiner did not maintain the finding that the claims invoke § 112(f) or the indefiniteness rejection raised by the PTAB.  Whether the PTAB would have raised this issue if appealed again is not clear.

In the end, the issue of whether § 112(f) is invoked for claims that do not recite means-plus language appears fluid.  In the absence of further guidance, patent practitioners may wish to take proactive steps to avoid unintential triggering of § 112(f) interpreation, and/or findings that a claim so construed is indefinite under § 112(b).  One option is to recite, when possible, terms that are well understood to connote structure.  As another precaution, in describing components that are claimed based on their functions, patent practitioners should consider illustrating and describe examples of such components, and explain in the detailed description the structural details and operations sufficient to implement the function.

[1] No. 2014-1218 (Fed. Cir. Sept. 4, 2015).

[2] No. 2013-1130 (Fed. Cir. June 16, 2015).

[3] Media Rights, slip op. at 8.

[4] Williamson, slip op. at 15.

[5] Williamson, slip op. at 16.

[6] Media Rights, slip op. at 9.

[7] No. 2010-1525 (Fed. Cir. June 15, 2011).

[8] Media Rights, slip op. at 11.

[9] Id. at 12.

[10] Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014).

[11] Media Rights, slip op. at 12.

[12] Id. at 13.

[13] Id.

[14] Id.

[15] Id. at 15.

[16] Id.

[17] See In re Katz Interactive Call Processing Patent Litig., 639 F. 3d 1303 (Fed. Cir. 2011).

[18] See Ex Parte Lakkala (March 13, 2013), Ex Parte Erol (March 13, 2013), Ex Parte Smith (March 14, 2013), and Ex Parte Cadarso (April 26, 2013).

[19] Ex Parte Lakkala Appeal 2011-001526 at 12.

[20] Id. at 13.

[21] Media Rights, slip op. at 10.

[22] Media Rights, slip op. at 11.

[23] Id.

[24] Williamson, slip op. at 18.

[25] Id. at 19.