Nevertheless, as a matter of policy, patent applicants have needed to conform with the written description, enablement, and definiteness requirements in § 112 in substantially the same form over the last five decades. The Way Things Are Current Status of the Law - The Relationship Between Patent Eligibility and 35 U.S.C. § 112 Sections 101 and 112 provide their own separate limitations to the scope of patent protection in ways that are sometimes complimentary and sometimes contradictory. The contours of these sections of the Patent Act are discussed below. § 101 Patent eligibility under § 101 is traditionally understood as a “threshold” test: the first of multiple challenges to the sufficiency of a patented invention.

Supplemental Examination has been in place for a few years now, (see Nyshadham, Burgy, Murphy, Lewis, and Irving, “AIA Supplemental Examination Nuts and Bolts: Get it in Your Toolbox and Don’t Leave Home Without It,” AIA Prosecution First blog post June 3, 2019) and it is interesting to see how some patent owners have used it and what results the procedure has provided. In Santos, Bosch, Leiman, Barker, Ward, Lewis, and Irving, “A Tale of Two Supplemental Examinations: Part 1: Unraveling Confusion,” June 6, 2019, we looked at a Supplemental Examination request filed by a patent owner to address issues relating to 35 U.S.C. §112. We discuss here in Part 2 a Supplemental Examination request filed by a patent owner to address an inadvertent failure to cite prior art during original prosecution.Failure to cite prior art may be important because, according to 37 C.F.R. § 1.56, each individual associated with the filing and prosecution of a patent application owes a duty of candor and good faith to the USPTO, including a duty to disclose to the USPTO all information known to that individual to be material to patentability of the claims.

It is the first post-Williamson Federal Circuit opinion to push back against the expansion of § 112(f), and it does so in a doctrinally coherent fashion that provides useful guidance to district courts and to future Federal Circuit panels. 35 U.S.C. § 112(f) provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” It has long been the rule that when a claim limitation lacks the word “means,” a presumption arises that § 112(f) is inapplicable.

On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U.S.C. § 112(f), which are commonly referred to as “means-plus-function” or “step-plus-function” limitations. These types of claim formats provide an option to claim an element as a means or step for performing a specified function without reciting any structure, material, or acts.Although § 112(f) limitations have traditionally been less common in life sciences technologies as compared to, for example, electronics and devices, they are sometimes used as a drafting strategy to capture claim scope of interest.The USPTO memorandum does not include any substantive change for how Examiners are to conduct examination of claims involving such limitations, but rather “reinforces the importance” of properly interpreting these limitations.35 U.S.C. § 112(f) provides the following:ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such clai

In VDPP LLC v. Vizio, Inc.,1 the Federal Circuit held that the claim terms “processor” and “storage” were not considered to be drafted in means-plus-function format and, therefore, were not subject to interpretation under 35 U.S.C. § 112(f).VDPP owned U.S. Patent Nos. 9,699,444 (the ’444 patent), 9,948,922 (the ’922 patent) and 10,021,380 (the ’380 patent). The patents generated an illusion of continuous movement, repeatedly displaying at least two substantially comparable images and a third different bridging picture.

By now, you are probably aware of the numerous patent law changes made under the America Invents Act. If you are involved in patent application preparation and/or prosecution, you are probably also aware of the recent tendencies of Examiners to (rightly or wrongly) interpret claim terms under 35 U.S.C. 112, sixth paragraph. One trend that you may not be aware of from 2013, however, is the growing number of Appeals involving computer related claims where the Patent Trial and Appeals Board (PTAB) issued one or more new grounds of rejection under 35 U.S.C. § 112.

Functional Claiming in Computer-implemented InventionsThe USPTO also announced a new guidance for the application of Section 112 to computer-implemented inventions. The “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” guidance (referred to herein after as the New Guidance) provides clarification on the application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a), specifically as they relate to computer-implemented inventions.Under the New Guidance, determining whether a claim recitation invokes § 112(f) requires application of a three-prong test, which instructs examiners to determine whether: (1) the recitation includes the term “means” or a generic placeholder, (2) the term is modified by functional language, and (3) the term is not modified by sufficient structure, material, or acts for performing the claimed function. The absence of the term “means” triggers the presumption that § 112(f) does not apply; however the presumption can be overcome if the claim does not include “sufficiently definite structure,” or if the claim recites “function without reciting sufficient structure for performing that function.”

As a result of Williamson II, the Federal Circuit has weakened the “presumption” that claim elements lacking the term “means” fall outside the means-plus-function analysis.1. “Means-Plus-Function” Claim Elements Means-plus-function claim elements are specifically authorized by the Patent Act, which provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” 35 U.S.C. § 112(f) (previously 35 U.S.C. § 112, ¶ 6, prior to the America Invents Act). The Patent Act also provides that a means-plus-function element “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

On June 16, 2015, the Federal Circuit issued its decision in Williamson v. Citrix Online, overruling en banc a long line of precedent regarding functional claiming and affirming a District Court decision finding asserted claims 8-16 of U.S. Patent Number 6,155,840 (“the ‘840 Patent”) are subject to the requirements of 35 U.S.C. § 112, para. 6, despite a lack of “means” or “step for” language. In so doing, the Court affirmed the District Court’s determination that those claims are indefinite for lack of definite structure.

On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution record, the PTO’s interpretation of such claim limitations. The goal of the memorandum is to ensure consistency in connection with the examination of such limitations, provide both the applicant and the public with notice regarding the claim interpretation used by the patent examiner, and provide the applicant an opportunity to advance a different claim interpretation early in the prosecution.As stated in 35 U.S.C. §112(f), “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” The memorandum does not suggest any changes in interpretation of the statute.One aspect of the memorandum is to remind examiners of the resources and guidance available when examining means-plus-function and step-plus-function claim limitations, specifically MPEP §§ 2181-2187 and refresh training. In accordance with the guidance, the primary steps when examining such claim elements include:Determining whether a claim limitation invokes § 112(f)Ensuring the record is clear with respect to invoking § 112(f)Evaluating the description necessary to support a § 112(f) claim limitation under §§ 112(a) and (b).To determine whether a claim limitation invokes §112(f