June 17, 2011

Does the Federal Circuit “mean” it this time? Adding confusion to when claim language lacking the word “means” should be subject to means-plus-function analysis.

Inventio AG v. ThyssenKrupp Elevators Americas Corp., No. 2010-1525 (Fed. Cir. June 15, 2011).

The Federal Circuit long ago answered whether a functional claim term that lacked structure should be analyzed as a means-plus-function limitation, even if the word “means” is missing.  “Of course,” the Federal Circuit chortled, unless the claim term connotes sufficiently definite structure to one of ordinary skill in the art, or the remaining claim language recites sufficiently definite structure to perform the claim term’s function.  See, e.g., Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095-97 (Fed. Cir. 2008) (“mechanism for moving said finger” is subject to § 112 ¶ 6 analysis); Massachusetts Inst. of Tech. & Elec. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (“colorant selection mechanism” is subject to § 112 ¶ 6 analysis); Toro Co. v. Deere & Co., 355 F.3d 1313, 1325 (Fed. Cir. 2004) (“control mechanism for controlling the operation of said valve” is subject to § 112 ¶ 6 analysis).

Inventio says not so fast.  It has set us free.  It has loosed us from the awful prison of a claim’s four corners.  In true cart-before-the-horse fashion, we are now told to let our imaginations ride freely through a patent’s specification, and discover what we can about an otherwise functional claim term’s proper construction.  Slip. op. at 12.  Employing exactly that technique, the Inventio court concluded that the claim terms “computing unit” and “modernizing device” are not in means-plus-function format, because the patent’s specification breathed sufficient structure into them.  Id. at 12-18.  Curious.

If a claim term isn’t subject to means-plus-function analysis, mustn’t we avoid the reversible sin of reading limitations from the specification into a claim?  Or, if a claim term is subject to means-plus-function analysis, aren’t we directed to look to the specification to determine its structure anyway?  What are we to do with this (aside from using it like a cudgel on opposing counsel)?

First, for the office lawyer that wants to write a means-plus-function claim, for goodness sake use the word “means.”  For the rest of us, see the parenthetical above.