Transcript
Means-Plus-Function: The Risk of Losing Your Way​​.
The following is a computer-generated transcript from the Patently Strategic Podcast. The results aren't always perfect, but we will continue working on improving the quality of the automation.
WEBVTT
00:05.170 --> 00:08.394
G'day and welcome to the Patently Strategic Podcast, where we discuss all things
00:08.432 --> 00:11.458
at the intersection of business, technology, and patents.
00:11.614 --> 00:15.346
This podcast is a monthly discussion amongst experts in the field of patenting.
00:15.418 --> 00:19.302
It is for inventors, founders, and IP professionals alike, established or
00:19.316 --> 00:22.674
aspiring. And in today's episode, we pick up right where we left off
00:22.712 --> 00:25.794
last month with another but equally important look into the world
00:25.832 --> 00:29.238
of enablement. This topic hearkens back to the fundamental deal of the
00:29.264 --> 00:32.698
patent system. Long term progress of science and the useful
00:32.734 --> 00:36.514
arts is promoted by trading a government granted window of exclusivity
00:36.562 --> 00:40.126
to inventors in exchange for an enabling public disclosure
00:40.198 --> 00:44.170
that teaches the public how to make and use the invention. This predictably
00:44.230 --> 00:47.590
leads to some tension in the system. Inventors understandably
00:47.650 --> 00:51.418
want the broadest possible and most future proof coverage for their ideas.
00:51.514 --> 00:55.810
The health of the broader public innovation ecosystem, however, depends on not wholesale
00:55.870 --> 00:59.302
blocking of iteration and competition by granting exclusive rights
00:59.326 --> 01:02.854
that can go well beyond what was specifically invented in the scope
01:02.902 --> 01:06.414
of any given granted patent. One place in particular this
01:06.452 --> 01:10.146
tension arises is in an area of patent law referred to as means
01:10.208 --> 01:13.726
plus function claiming to someone newer to the world of IP,
01:13.798 --> 01:17.134
this is yet another terribly unintuitive turn of phrase.
01:17.302 --> 01:21.162
Fear not, we'll unpack that in just a bit. For now, suffice it
01:21.176 --> 01:24.918
to say that it is another semantic sharp corner alive and well in our
01:24.944 --> 01:28.374
court system, with two significant Federal Circuit Court rulings as
01:28.412 --> 01:31.966
recent as this past spring. There's a tremendous amount of nuance
01:32.038 --> 01:35.614
in these rulings, in this tension, and in the general understanding
01:35.662 --> 01:39.478
surrounding means plus function claiming to the point of seeming overly
01:39.514 --> 01:42.858
pedantic at first glance. But it's important to remember that
01:42.884 --> 01:46.714
word choice matters a great deal in the world of patenting. You're using the English
01:46.762 --> 01:50.818
language to draw a picture around highly technical concepts. The precision
01:50.854 --> 01:53.970
with which this is done, down to the semantic level, can make
01:54.020 --> 01:57.678
all the difference when it comes to your patent application being rejected or
01:57.704 --> 02:01.218
granted in the future likelihood of your ability to assert your rights or
02:01.244 --> 02:04.638
defend against invalidation word choice too narrow or
02:04.664 --> 02:08.350
overly specific you can easily be designed around by competitors.
02:08.470 --> 02:11.802
We're choice too broad and only describing what something
02:11.876 --> 02:15.562
is versus what it does, and you risk rejection or invalidation
02:15.646 --> 02:19.374
for what will be ruled as linguistic tricks to get more coverage than what you
02:19.412 --> 02:23.158
actually invented. The tension is real, and the case law interpretation
02:23.194 --> 02:27.246
is fluid. But it all still comes down to determining if the chosen words
02:27.368 --> 02:31.062
will enable a person of ordinary skill in the art to carry out an
02:31.076 --> 02:34.398
invention in the interest of other inventors being able to build on the
02:34.424 --> 02:37.878
idea while also avoiding trespassing with infringement. In this
02:37.904 --> 02:41.958
month's episode, Dr. Ashley Slot, president and Director of Patent Strategy here at
02:41.984 --> 02:45.558
Aurora, leads a discussion, along with our all star patent panel, into the
02:45.584 --> 02:48.834
nuanced world of means plus function claiming. The group
02:48.872 --> 02:52.342
digs into the statute, explores relevant case law and an analysis
02:52.366 --> 02:56.074
of the kinds of word choices that have and haven't caused problems for inventors,
02:56.182 --> 02:59.718
and also provides some great drafting tips for derisking the use of
02:59.744 --> 03:02.982
means plus function claim language. Ashley is joined today by
03:02.996 --> 03:06.766
our Always Exception, a group of IP experts including Kristen Hanson,
03:06.838 --> 03:10.918
patent strategist at Aurora dr. David Jackroll, president of Jacqueline
03:10.954 --> 03:14.170
Consulting david Cohen, principal at Cohen Sciences
03:14.290 --> 03:17.686
and Shelley Katarrier, patent strategist and search specialist.
03:17.758 --> 03:21.042
Now, before joining the group, as we often do, we'd like to provide a
03:21.056 --> 03:24.714
short primer on key concepts in this episode for those newer to the world
03:24.752 --> 03:28.330
of patenting. In breaking this down, there's a lot of talk in the episode
03:28.390 --> 03:31.738
about what's described in the spec or specification versus
03:31.774 --> 03:35.434
what's written in the claims. We review this distinction in the prior episode
03:35.482 --> 03:39.202
on American Axel and take an even deeper dive in our patent anatomy
03:39.226 --> 03:42.838
episode from season one. But in brief, the specification describes
03:42.874 --> 03:46.798
the invention and provides context for interpreting the claims.
03:46.954 --> 03:51.106
The claims are the heart of the application and point out the exact invention boundaries
03:51.178 --> 03:54.646
of what the applicant believes she's entitled to, specifically,
03:54.718 --> 03:58.258
what the patent covers. Now, moving on to statute scope
03:58.354 --> 04:01.662
when patents are examined by the patent office or later litigated in
04:01.676 --> 04:04.902
a courtroom, several sections of US statute come into play in
04:04.916 --> 04:08.578
determining if the claims in the patent are eligible, useful, novel,
04:08.674 --> 04:11.770
nonobvious, and enabled or properly described.
04:11.830 --> 04:15.318
Patents can be rejected or invalidated if one or more of the claims are
04:15.344 --> 04:18.858
determined to be otherwise. Problems fall under title 35 of
04:18.884 --> 04:22.678
US. Code in this episode centers around section 112, which is largely
04:22.714 --> 04:26.194
concerned with enablement. We're describing the invention in sufficient
04:26.242 --> 04:29.970
detail to allow it to be practiced by someone skilled in the art without
04:30.080 --> 04:33.858
undue experimentation. Subsection F of section 112
04:33.944 --> 04:37.710
addresses the use of functional language and patent claims with many
04:37.760 --> 04:41.898
conditions that our panel will cover. US. Patent law does provide provisions for
04:41.924 --> 04:45.658
using functional language, or what something functionally does versus
04:45.694 --> 04:49.134
the more traditional approach that defines the structure or the
04:49.172 --> 04:52.998
how it does it of the invention. Another way of saying this is the
04:53.024 --> 04:56.614
claim is functional when it describes a feature by what it does versus
04:56.662 --> 05:00.778
what it is. So why is this referred to as means plus function claiming
05:00.874 --> 05:04.114
despite it not being the only trigger? These claims originally
05:04.162 --> 05:07.734
appeared as phrases worded like a means to turn on a light
05:07.772 --> 05:11.350
bulb, so literally quote a means unquote
05:11.530 --> 05:15.166
followed by or plus some functional outcome.
05:15.298 --> 05:18.858
This generic language provides no specificity as to how the ball is
05:18.884 --> 05:22.134
turned on, potentially including structural elements like
05:22.172 --> 05:25.470
switches and copper wires, but instead encompasses all
05:25.520 --> 05:29.058
possible means by which a bulb can be turned on. While use of this
05:29.084 --> 05:32.598
type of language in its equivalence is legally in play, as you learn
05:32.624 --> 05:36.570
in the discussion, corresponding structure must still be found or
05:36.620 --> 05:40.390
commonly inferred if the claim is not at risk of being ruled indefinite
05:40.450 --> 05:44.298
by the patent office or courts. So the last bit of context we'd like
05:44.324 --> 05:48.130
to provide is around the word nons, which practitioners use with regularity,
05:48.190 --> 05:51.690
and this episode is no exception. To get around the literal means plus
05:51.740 --> 05:55.230
function analysis being triggered by the literal use of the word
05:55.340 --> 05:59.050
means for in a claim, people started using slightly
05:59.110%
00:05.170 --> 00:08.394
G'day and welcome to the Patently Strategic Podcast, where we discuss all things
00:08.432 --> 00:11.458
at the intersection of business, technology, and patents.
00:11.614 --> 00:15.346
This podcast is a monthly discussion amongst experts in the field of patenting.
00:15.418 --> 00:19.302
It is for inventors, founders, and IP professionals alike, established or
00:19.316 --> 00:22.674
aspiring. And in today's episode, we pick up right where we left off
00:22.712 --> 00:25.794
last month with another but equally important look into the world
00:25.832 --> 00:29.238
of enablement. This topic hearkens back to the fundamental deal of the
00:29.264 --> 00:32.698
patent system. Long term progress of science and the useful
00:32.734 --> 00:36.514
arts is promoted by trading a government granted window of exclusivity
00:36.562 --> 00:40.126
to inventors in exchange for an enabling public disclosure
00:40.198 --> 00:44.170
that teaches the public how to make and use the invention. This predictably
00:44.230 --> 00:47.590
leads to some tension in the system. Inventors understandably
00:47.650 --> 00:51.418
want the broadest possible and most future proof coverage for their ideas.
00:51.514 --> 00:55.810
The health of the broader public innovation ecosystem, however, depends on not wholesale
00:55.870 --> 00:59.302
blocking of iteration and competition by granting exclusive rights
00:59.326 --> 01:02.854
that can go well beyond what was specifically invented in the scope
01:02.902 --> 01:06.414
of any given granted patent. One place in particular this
01:06.452 --> 01:10.146
tension arises is in an area of patent law referred to as means
01:10.208 --> 01:13.726
plus function claiming to someone newer to the world of IP,
01:13.798 --> 01:17.134
this is yet another terribly unintuitive turn of phrase.
01:17.302 --> 01:21.162
Fear not, we'll unpack that in just a bit. For now, suffice it
01:21.176 --> 01:24.918
to say that it is another semantic sharp corner alive and well in our
01:24.944 --> 01:28.374
court system, with two significant Federal Circuit Court rulings as
01:28.412 --> 01:31.966
recent as this past spring. There's a tremendous amount of nuance
01:32.038 --> 01:35.614
in these rulings, in this tension, and in the general understanding
01:35.662 --> 01:39.478
surrounding means plus function claiming to the point of seeming overly
01:39.514 --> 01:42.858
pedantic at first glance. But it's important to remember that
01:42.884 --> 01:46.714
word choice matters a great deal in the world of patenting. You're using the English
01:46.762 --> 01:50.818
language to draw a picture around highly technical concepts. The precision
01:50.854 --> 01:53.970
with which this is done, down to the semantic level, can make
01:54.020 --> 01:57.678
all the difference when it comes to your patent application being rejected or
01:57.704 --> 02:01.218
granted in the future likelihood of your ability to assert your rights or
02:01.244 --> 02:04.638
defend against invalidation word choice too narrow or
02:04.664 --> 02:08.350
overly specific you can easily be designed around by competitors.
02:08.470 --> 02:11.802
We're choice too broad and only describing what something
02:11.876 --> 02:15.562
is versus what it does, and you risk rejection or invalidation
02:15.646 --> 02:19.374
for what will be ruled as linguistic tricks to get more coverage than what you
02:19.412 --> 02:23.158
actually invented. The tension is real, and the case law interpretation
02:23.194 --> 02:27.246
is fluid. But it all still comes down to determining if the chosen words
02:27.368 --> 02:31.062
will enable a person of ordinary skill in the art to carry out an
02:31.076 --> 02:34.398
invention in the interest of other inventors being able to build on the
02:34.424 --> 02:37.878
idea while also avoiding trespassing with infringement. In this
02:37.904 --> 02:41.958
month's episode, Dr. Ashley Slot, president and Director of Patent Strategy here at
02:41.984 --> 02:45.558
Aurora, leads a discussion, along with our all star patent panel, into the
02:45.584 --> 02:48.834
nuanced world of means plus function claiming. The group
02:48.872 --> 02:52.342
digs into the statute, explores relevant case law and an analysis
02:52.366 --> 02:56.074
of the kinds of word choices that have and haven't caused problems for inventors,
02:56.182 --> 02:59.718
and also provides some great drafting tips for derisking the use of
02:59.744 --> 03:02.982
means plus function claim language. Ashley is joined today by
03:02.996 --> 03:06.766
our Always Exception, a group of IP experts including Kristen Hanson,
03:06.838 --> 03:10.918
patent strategist at Aurora dr. David Jackroll, president of Jacqueline
03:10.954 --> 03:14.170
Consulting david Cohen, principal at Cohen Sciences
03:14.290 --> 03:17.686
and Shelley Katarrier, patent strategist and search specialist.
03:17.758 --> 03:21.042
Now, before joining the group, as we often do, we'd like to provide a
03:21.056 --> 03:24.714
short primer on key concepts in this episode for those newer to the world
03:24.752 --> 03:28.330
of patenting. In breaking this down, there's a lot of talk in the episode
03:28.390 --> 03:31.738
about what's described in the spec or specification versus
03:31.774 --> 03:35.434
what's written in the claims. We review this distinction in the prior episode
03:35.482 --> 03:39.202
on American Axel and take an even deeper dive in our patent anatomy
03:39.226 --> 03:42.838
episode from season one. But in brief, the specification describes
03:42.874 --> 03:46.798
the invention and provides context for interpreting the claims.
03:46.954 --> 03:51.106
The claims are the heart of the application and point out the exact invention boundaries
03:51.178 --> 03:54.646
of what the applicant believes she's entitled to, specifically,
03:54.718 --> 03:58.258
what the patent covers. Now, moving on to statute scope
03:58.354 --> 04:01.662
when patents are examined by the patent office or later litigated in
04:01.676 --> 04:04.902
a courtroom, several sections of US statute come into play in
04:04.916 --> 04:08.578
determining if the claims in the patent are eligible, useful, novel,
04:08.674 --> 04:11.770
nonobvious, and enabled or properly described.
04:11.830 --> 04:15.318
Patents can be rejected or invalidated if one or more of the claims are
04:15.344 --> 04:18.858
determined to be otherwise. Problems fall under title 35 of
04:18.884 --> 04:22.678
US. Code in this episode centers around section 112, which is largely
04:22.714 --> 04:26.194
concerned with enablement. We're describing the invention in sufficient
04:26.242 --> 04:29.970
detail to allow it to be practiced by someone skilled in the art without
04:30.080 --> 04:33.858
undue experimentation. Subsection F of section 112
04:33.944 --> 04:37.710
addresses the use of functional language and patent claims with many
04:37.760 --> 04:41.898
conditions that our panel will cover. US. Patent law does provide provisions for
04:41.924 --> 04:45.658
using functional language, or what something functionally does versus
04:45.694 --> 04:49.134
the more traditional approach that defines the structure or the
04:49.172 --> 04:52.998
how it does it of the invention. Another way of saying this is the
04:53.024 --> 04:56.614
claim is functional when it describes a feature by what it does versus
04:56.662 --> 05:00.778
what it is. So why is this referred to as means plus function claiming
05:00.874 --> 05:04.114
despite it not being the only trigger? These claims originally
05:04.162 --> 05:07.734
appeared as phrases worded like a means to turn on a light
05:07.772 --> 05:11.350
bulb, so literally quote a means unquote
05:11.530 --> 05:15.166
followed by or plus some functional outcome.
05:15.298 --> 05:18.858
This generic language provides no specificity as to how the ball is
05:18.884 --> 05:22.134
turned on, potentially including structural elements like
05:22.172 --> 05:25.470
switches and copper wires, but instead encompasses all
05:25.520 --> 05:29.058
possible means by which a bulb can be turned on. While use of this
05:29.084 --> 05:32.598
type of language in its equivalence is legally in play, as you learn
05:32.624 --> 05:36.570
in the discussion, corresponding structure must still be found or
05:36.620 --> 05:40.390
commonly inferred if the claim is not at risk of being ruled indefinite
05:40.450 --> 05:44.298
by the patent office or courts. So the last bit of context we'd like
05:44.324 --> 05:48.130
to provide is around the word nons, which practitioners use with regularity,
05:48.190 --> 05:51.690
and this episode is no exception. To get around the literal means plus
05:51.740 --> 05:55.230
function analysis being triggered by the literal use of the word
05:55.340 --> 05:59.050
means for in a claim, people started using slightly
05:59.110%