1. The Evolution of the Law on Functional Claiming Marc A. Hubbard Hubbard Law, PLLC Dallas Texas mhubbard@hubbardip.com State Bar of Texas 29th Annual Course on Advanced Intellectual Property Law San Antonio, Texas February 19, 2016 1

2. Functional Claiming Swinging Pendulum Like it’s cousin, subject matter eligibility, the jurisprudential pendulum on functional claiming is swinging back and getting ready to hit us in the rear end What is it? It’s history Issues arising from functional claiming Trends Recommendations 2

3. What is functional claiming? Claiming what the invention does and not what it is Not prohibited, per se In fact, expressly permitted by §112(f)* *Will be using post-AIA section 112 paragraph numbering in presentation; references to post- AIA section intended to also include pre-AIA counterparts. 3

4. §112(f) An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

5. Why Use It? To capture inventor’s contribution at a more abstract level in order to cover all known and future implementations Claim scope is more aligned with the scope of potential competitor activities and follow-on innovation To reduce risk of unintended or unnecessary limitation in claim To streamline drafting of specification; it is often how inventors think of their invention and describe it to us As a last resort when specification does not contain written description to amend with a broad structural limitation 5

6. Functional claiming is popular, along with strong desire to avoid to §112(f) construction Chart prepared by Dennis Crouch, Patently-O Blog (2014) 6 In re Donaldson

7. But, There Are Issues And Plenty of Pitfalls Claim construction: when does §112(f) apply, and when does it not? Increased risk of falling victim to other statutory requirements §101 greater risk of subject matter ineligibility in certain fields §112(a) Lack of written description to support breadth of claim No enablement of full scope of claim §112(b): Unclear or indefinite claim Inadvertent invocation of §112(f), and possible invalidation under §112(b). 7

8. An Early, Persistent Issue at the Supreme Court Earliest example: O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) In 20th Century, all Supreme Court cases considering claims with functional limitations found them to violate statute Rev. Stat. 4888, which contained requirements similar to those in §§112(a) and (b). Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928) GE Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 55 USPQ 381 (1942) Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1(1946) 8

9. Supreme Court’s Reasoning Under the facts in these cases, functional limitations at point of novelty — extended the patent beyond the written description rendered the claim indefinite Opinions characterized functional claiming as a “vice” and voiced policy concern that broad and ambiguous claims discourage follow on innovation

10. Supreme Court’s Concerns GE Co. v. Wabash Appliance Corp (1938): “[T]he vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” “A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.” 10

11. Statutory response to Halliburton in 1952 Act 35 USC §112(f): An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. A bargain that allows for functional claiming, even at the point of novelty, subject to condition of limited construction. 11

12. Fed. Cir: Functional Claiming Not, Per Se, Improper In re Swinehart, 439 F.2d 210 (C.C.P.A. 1971) “We are convinced that there is no support, either in the actual holdings of prior cases or in the statute, for the proposition, put forward here, that "functional" language, in and of itself, renders a claim improper.” Need only be concerned with what §112 requires, and that the language used — is not precise and definite enough to provide a clear-cut indication of the scope of subject matter embraced by the claim is so broad that it causes the claim to have a potential scope of protection beyond that which is justified by the specification disclosure. 12

13. Fed. Cir: §112(f) applies only to purely functional limitations §112(f) applies “only to purely functional limitations that do not provide the structure that performs the recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc). Whether certain claim language invokes § 112(f) is an exercise in claim construction, which is a matter of law. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 702 (Fed. Cir. 1998). How do you decide whether §112(f) applies? 13

14. Start With What The Patentee Signals The use of the word "means" in a claim element creates a rebuttable presumption that §112(f) applies; the absence creates a rebuttable presumption that it does not. Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d 696, 703-04 (Fed. Cir. 1998) The presumption flowing from the absence of the term “means” is a strong one that is not readily overcome. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011) "When the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term 'means,' we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure" Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012) 14

15. Avoiding Using “Means” Does Not Always Work Williamson v. Citrix Online, LLC: “Generic terms such as "mechanism," "element," "device," and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke §112, ¶ 6.” “Module" is a well-known nonce word* that can operate as a substitute for "means" "'module' is simply a generic description for software or hardware that performs a specified function.” *coined for or used on one occasion

16. But, It Sometimes Does Expressions with nonce words have avoided §112(f) construction because modified term considered to be structural: detent mechanism connector assembly for connecting “circuit” in a claim with multiple different “circuits" aesthetic correction circuitry digital detector connector assembly sealingly connected joints eyeglass hanger member

17. The Federal Circuit Takes a Step Back In 2015 Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)(en banc) Although there remains a presumption based on absence or presence of “means,” it is no longer “strong” and there is no heightened evidentiary standard for overcoming it Presumption can be overcome by “if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” The 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. 17

18. Concern Over A “Proliferation” of Functional Claiming Federal Circuit in Williamson (2015): “[The strong presumption] has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute." Williamson appears to be a preemptive move by Federal Circuit to head off Supreme Court involvement. Is there still reason for Supreme Court to step in? 18

19. BPAI/PTAB Gets Into the Action Series of precedential opinions relating to functional claiming issued in 2008-2009 addressing functional claim language under §112 Halliburton remains good law for any purely functional claim limitation not limited to a structure, either by §112(f) or by explicit recitation Functional claim language must be limited by application of §112(f) or additional recitation of structure. Otherwise, invalid under §112(a). Full scope of claim must be enabled “[W]hen a limitation that encompasses any and all structures or acts for performing a recited function, including those which were not what the applicant had invented, the disclosure does not provide a scope of enablement commensurate with the scope of the claim …” Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) 19

20. Risk of Unintended Invocation: Indefiniteness Under §112(b) Unintended application of §112(f) No corresponding structure in specification In Re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc). Specification must include an adequate disclosure showing what is meant by that the language invoking §112(f). If not there, an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. In the case of corresponding structure being a programmed general purpose computer or processor, no algorithm for performing the function See Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008)

21. Not Easy Sailing For Patentee If They Avoid §112(f) Invocation Broad, functional limitations appear to be a target of courts, the PTO, and others seeking to limit the scope of patents. Increased risk of tripping over §101 and §112 Alice / Mayo two-part framework requires an “inventive concept” within the claims that must go beyond the unpatentable abstract idea and be more than “well-understood, routine, conventional activities previously known.” Functional expressions, especially at point of novelty, are likely to be considered part of the abstract idea and not to provide necessary structure to support inventive concept beyond the abstract idea. Greater risk of not meeting written description and full scope enablement requirements if claim covers structures well beyond what is described Also, more risk of claim being indefinite under new “reasonable certainty” standard, Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), if claim is much broader than specification 21

22. What’s going to happen to all of these claims? How many of these limitations are going to end up being treated under §112(f)? Chart prepared by Dennis Crouch, Patently-O Blog (2014) 22

23. Receiving Increased Scrutiny From the Courts From Academia From Administration — Called for tightening of functional claiming, especially for software inventions From PTO 2013 Examiner training on §112(a), §112(b), and §112(f) generally instructing them to examine for functional claiming issues Informative decisions from the PTAB in 2013 interpreting “processor for” and other language relating to claims to computer implemented inventions as invoking §112(f) and resulting in finding of indefiniteness PTO’s Enhanced Clarity of Record Initiative 23

24. Where Do We Stand? Is the presumption still meaningful, except as to who has burden of proof that §112(f) applies, or does not? Is it still possible to have a fully functional claim limitation, one not limited by any sort of structure? Just how much structure must be recited to avoid §112(f) construction? How meaningful are earlier cases deciding that certain terminology are not nonce words because they appeared to be structural? How do you or can you prove that word used in a functional limitation is structural, and what proof is sufficient? Cert. petition in Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC over use of extrinsic evidence (expert testimony) in construing “voltage source means”

25. Predictions All purely functional limitations will be treated under §112(f) More and more toughly contested fights over whether a particular term is structural terms known in the art to connate structure will need to be used to void §112; broad nonce terms will not work If terminology is not understood to someone of ordinary skill in the art as structural, or a specially defined term that is structural, then the limitation will be treated under §112(f). See, for example, Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC Continued scrutiny from PTO and courts. 25

26. Claim Drafting Recommendations 1.Don’t use the word “means” unless you intend to invoke112(f) treatment 2.Avoid known or possible“nonce” terms 3.Avoiding modifying a term intended to be structural with functional language unless (a) necessary to further limit term to distinguish over art, and (b) the term is recognized within the art as structural 4.Choose terminology that can be proven to the person of ordinary skill in the art to connote substantial structure 5.Better yet, choose terms recognized as denoting structure, but that are defined in terms of the function 6.Avoid made up terms (or using the inventor’s made up terminology) unless you define them in structural terms 26

27. Specification Drafting Recommendations Include evidence that supports finding that a claim term is structural, and, better yet, has a broad meaning If not a term known in the art, define it to have the broad meaning you are looking for, but be aware §112(a) issues Describe multiple structures, or a range of structures, to support a broad, functional limitation (again make sure full scope enabled) Means plus function limitation can be very effective tool with a well-developed specification In a general purpose computer implementation, must include multiple steps for implementing each function 27

28. Marc A. Hubbard Hubbard Law PLLC 4848 Greenville Ave, Suite 1490 Dallas, Texas 75206 (214) 396-6001 mhubbard@hubbardip.com www.hubbardip.com © 2016 Marc A. Hubbard Contact Information 28