The Federal Circuit Removes the Heightened Standard for Application of 35 USC § 112(6) Where “Means” is Not Present
In an earlier panel decision in Williamson v. Citrix Online, LLC, 2013-1130 (Fed. Cir. 2014), the Federal Circuit had created a strong presumption that 35 USC § 112(6) was not to be applied if a claim at issue did not include the word “means.” In its recent en banc opinion in Richard A. Williamson v. Citrix Online, LLC et. al., 2013-1130 (Fed Cir. 2015) (en banc) which replaces the earlier panel decision, the Court maintained that the presence or absence of the word “means” in the claim creates a rebuttable presumption that § 112(6) is not applicable. However, the Court redefined the previous “strong presumption” standard with a new standard, which turns on “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Slip Op. p. 16. The en banc Federal Circuit supported its “new” standard with long-held Federal Circuit case law, suggesting that § 112(6) can be applied (even in the absence of the term “means”) where a claim limitation either fails to “recite sufficiently definite structure,” or recites “function without reciting sufficient structure for performing that function.” See, e.g., Watts v. XL Sys., Inc. 232 F. 3d 877, 880 (Fed. Cir. 2000).
Drafting patent claims that emphasize operations, steps and activities of structure can be beneficial. This is common practice and solid rationale for method-type claims that attempt to avoid the use of structure required for performing such operations, steps and activities. Similarly, apparatus-type claims avoid recitation of overly-specific structure can also be beneficial. Care should be taken, however, to avoid being overly vague with the use of structural terms that might be deemed as being purely-functional and as failing to convey the identity of corresponding structure to a person of ordinary skill in the art. As an example, the Court of Appeals for the Federal Circuit has held that the claim term “receiver” in the context of a radio frequency transmitters and receivers (and thus in the context of its inherent function of receiving radio frequency signals) is sufficiently understood, such that its use does not render a claim subject to 112(2) indefiniteness problems and avoids a specification-narrowed interpretation if construed as “means for receiving” under § 112(6). Another way to avoid being overly vague with the use of functionally-weighted structural terms is to recite internal/inherent structure with the term as would be more-recognizable by one of ordinary skill in the art. This approach may also usurp an interpretation under § 112(6) if sufficient structure is recited with the term. As examples, consider “receiver circuit” instead of receiver or “spring mechanism including a spring” instead of spring mechanism. According to certain decisions under the USPTO Board of Appeals (although not yet adopted by the Federal Circuit), another way to avoid being overly vague with the use of functionally-weighted structural terms is to couple the term to another structural claim term.
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