Two recent district court opinions provide some guidance for predicting whether claim language will invoke a means-plus-function construction.
Invoking means-plus-function isn’t as straight forward as it used to be. It’s well known that claiming “means for” is all but certain to invoke a means-plus-function construction. Things get trickier when that phrase is omitted, however. And this has become a hot topic in patent law following the Williamson v. Citrix Online (Fed. Cir. 2015) (en banc) decision.
In SyncPoint Imaging, LLC v. Nintendo of America, Inc., 15-cv-00247, (E.D. Tex., January 5, 2016), the court said that “processor… for…” language connotes sufficiently definite structure to overcome a pre-AIA §112(6)/post-AIA §112(f) challenge. The Court supported its conclusion with dictionary definitions that show that the term “processor” refers to a class of structures. The Court further explained that incorporating the “objectives and operations of the processor” into the claim language suggests the particular structure to one of ordinary skill in the art. Therefore, means-plus-function is not invoked by that language.
Great! So, according to SyncPoint, “processor… for…” doesn’t invoke means-plus-function so long as the claim includes sufficient “objectives and operations of the processor.”
Well, what if the claim is more software-focused? What if the claim term at issue is a “computer application…”?
In Verint Systems Inc. v. Red Box Records Ltd., 14-cv-5403, (S.D.N.Y., January 4, 2016), the Court found that the dictionary definition of “application” was software without any meaningful structure even though it is well understood that computer applications are executed by computers. Therefore, the Court held that “computer application” triggers a means-plus-function construction. Other terms that triggered means-plus-function for the same reason are “monitoring system,” “monitoring device,” and “analysis module.” For those, the Court found that “system,” “device,” and “module” are nonce words that do not add any structure.
So what’s a practitioner to do?
I think the conservative claim-drafting approach is to assume that your claims will be construed as invoking means-plus-function and to put support in the specification. For example, as explained in the Verint Systems case, software that invokes means-plus-function must provide a sufficient algorithm in the specification to survive an indefiniteness challenge.
Also, remember that context is key. While “module” in the software sense may not connote structure, it may do so in other areas such as the automotive field where an “engine control module” or the like is much more likely to mean something structural to one having ordinary skill in the art.
Finally, this is just a summary of the two cases. Both go into quite a bit more detail than what’s included in this post. I encourage you to read them.