Since the 1990s, the Federal Circuit has consistently looked at §112(f) as being presumptively against a means-plus-function claim construction. The case law first raised the presumption to “strong” in Lighting World, then “strong…that is not readily overcome” in Inventio, then making it nearly impossible to assert §112(f) in Flo Healthcare Solutions. Flo allowed the Federal Circuit to state their unwillingness to apply §112(f) unless the claim contains the word “means” or clear evidence of no structure recitation, known as a placeholder term. Based on this precedent, the United States Patent and Trademark Office (USPTO) has developed and used training modules to drill this presumption into its examiners. This heightened presumption against patent-eligible material made it difficult for many to obtain patent coverage, particularly those in industries such as software development.
There was a significant departure from this trend on June 16, 2015. On this date, the Federal Court handed down its en banc opinion in Williamson v Citrix. The court explicitly overruled its earlier precedent in its presumption against §112(f) applicability and stated, “[t]hat characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balance analytical scale.” Though not a unanimous opinion, the change in Circuit claim characterization offers hope. This may prove especially important for those companies facing uncertainty or other brick walls post-Alice.
Even though the hurdle to getting §112(f) consideration has been significantly reduced, the end game is still important. After deciding §112(f) applied, the Federal Circuit moved to stage two of the analysis: looking at the specification. In this particular case, the specification did not adequately disclose a structure corresponding to the function, and the claims were still found indefinite. As one attorney put it, the specification “must be clear and sufficiently broad to fully encompass the operation of the function.” As an applicant, the specification again takes on special significance to strengthen a robust claim set comprised in part by a means-plus-function claim. By fully elaborating on the underlying structure and how it functions, applicants can ensure their claims withstand §112(f) review and that any close copies of the covered invention will be examined under the doctrine of equivalents.
Though the percentage of applications containing means-plus-function claims has dropped off drastically in the past decade from nearly 25 percent to less than 10 percent, these types of claims still hold a place of honor for many companies in niche markets. Post-Citrix, it is likely that there will be an increase in §112(f)-eligible claims within certain industries, particularly those hit hardest by Alice. These claims, however, will only be successful when accompanied by a specification grounded by clear and precise phrasing of the function and structure. By utilizing optimization tools during the drafting process to bolster both claims and the specification, applicants will be able to take advantage of the recent change at the Federal Circuit.