March/April 2020
IP Litigator
Under 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6), claims can be written in a “means-plus-function” format. In a typical case, means-plus-function claims recite a “means for [performing some function]” and cover only those structures in the patent’s specification capable of performing that function. Limitations that do not use the word “means” can still be treated as means-plus-function limitations if they do not “recite sufficiently definite structure.” This can be a problem if the patent drafter did not intend its claim terms to be treated as “means-plus-function” and failed to disclose the necessary structure in the specification. In such cases, a means-plus-function construction can be fatal.
Until 2015, there was a “strong presumption” that claim limitations, which did not expressly recite the word “means” or “step” should not invoke means-plus-function treatment under § 112(f). But in the face of increasingly functional software claiming, an en-banc Federal Circuit in Williamson v. Citrix Online, LLC removed the heightened evidentiary showing. Under Williamson, “the presumption can be overcome and § 112, ¶ 6 will apply 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.’” In the immediate aftermath of Williamson, some practitioners noted the court’s holding may “affect the scope and validity of claims for tens of thousands of patents in a way unintended by the drafters of those claims.”
Now five years later, various cases have relied on Williamson and applied Williamson’s standards to specific fact patterns. In this article, Finnegan attorneys Dan Cooley and Alex Harding explore the nuances of two such cases where the Federal Circuit analyzed the intrinsic record—the claim language, specification, and prosecution history—to reach different conclusions under 35 U.S.C. § 112(f).
Read the full article here.
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
Hybrid Conference
2024 California Intellectual Property Law Institute
October 21-22,2024
San Francisco
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Hybrid Conference
2024 New York Intellectual Property Law Institute
September 30 - October 1, 2024
New York
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.