{"id":214,"date":"2015-06-23T10:27:18","date_gmt":"2015-06-23T14:27:18","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=214"},"modified":"2015-06-23T10:27:18","modified_gmt":"2015-06-23T14:27:18","slug":"putting-your-fat-thumb-on-the-scale-of-claim-construction","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=214","title":{"rendered":"Putting Your Fat Thumb on the Scale of Claim Construction"},"content":{"rendered":"

In Williamson v. Citrix Online, LLC<\/em>, [2013-1130] (Fed. Cir. 2015), the Federal Circuit reduced the \u201cstrong\u201d presumption that a limitation expressed in functional language without using the word \u201cmeans\u201d is not subject to 35 USC \u00a7112, \u00b66 (35 USC \u00a7112(f)).\u00a0 \u00a0The Federal Circuit concluded that this heighted \u00a0burden was unjustified, uncertain in meaning and application, shifted the balance struck by Congress in passing \u00a7 112, \u00b66, and \u201chas resulted in a proliferation of functional claiming untethered to \u00a7 112, para. 6 and free of the strictures set forth in the statute.\u201d\u00a0 The Federal Circuit announced that henceforth the test of whether the words of the claim \u201care understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.\u201d<\/p>\n

While the Federal Circuit criticized its previous \u201cstrong\u201d presumption because of its \u201cinappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale\u201d\u00a0one wonders whether a patent applicant can\u2019t put its thumb back on the scale through definitions. \u00a0Consider U.S. Patent No. 6167810, which states:<\/p>\n

\"6167810\"<\/a><\/p>\n

The patentee has attempted to recapture the widely misunderstood meaning of \u201cmeans\u201d prior to In re Donaldson<\/em>, by covering all possible means\u00a0for performing the stated function.\u00a0 Maybe redefining \u201cmeans\u201d is a step too far, but if the test really is how the words are understood by persons of ordinary skill, would an express statement that \u201cnone of the claim terms are intended to be construed under 35 USC \u00a7112(f)\u201d affect how a person or ordinary skill in the art would understand the claims?<\/p>\n

Furthermore, if the test is whether the words of the claim \u201care understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure\u201d would a definition help to capture the broadest scope?\u00a0 Consider this language from U.S. Patent No. 6909672:<\/p>\n

\"6909672\"<\/a><\/p>\n

Whether by defining means to include \u201cany means\u201d as in U.S. Patent No. 6167810, or defining a functionally named element\u00a0 to include \u201cany means\u201d as in U.S. Patent No. 6909672, an applicant can try to exert some control over how the functional elements in its claims will be construed, as long as the applicant is mindful of the written description and enablement requirements of the other parts of \u00a7112.<\/p>\n

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In Williamson v. Citrix Online, LLC, [2013-1130] (Fed. Cir. 2015), the Federal Circuit reduced the \u201cstrong\u201d presumption that a limitation expressed in functional language without using the word \u201cmeans\u201d is not subject to 35 USC \u00a7112, \u00b66 (35 USC \u00a7112(f)).\u00a0 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-214","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/214","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=214"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/214\/revisions"}],"predecessor-version":[{"id":217,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/214\/revisions\/217"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=214"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=214"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=214"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}