Last Week in the Federal Circuit (March 1-5): Purely Functional Claiming And Means-Plus-Function Elements

Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that didn’t slow the Federal Circuit down in issuing opinions, including six precedential ones.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 6

Non-precedential opinions: 4

Rule 36: 7

Longest pending case from argument:  Safeguard Base Operations, LLC v. United States, No. 19-2261 (241 days)

Shortest pending case from argument (non-Rule 36): Olaplex, Inc. v. L’Oreal USA, Inc., No. 19-2280 (55 days)

Case of the week:  Rain Computing, Inc. v. Samsung Electronics America, Inc., Nos. 20-1646, -1656

Panel:  Judges Lourie, Dyk, and Moore, with Judge Moore writing the opinion

You should read this case if:  you have a claim term with functional language that may be subject to means-plus-function interpretation

Everyone knows patents must end with claims that “particularly point out and distinctly” identify the invention.  35 U.S.C. § 112(a).  But some inventions don’t lend themselves to succinct delineation in the claims.  So Congress provided an alternative—rather than identify in the claims an exact structure or step that is an element of the invention, patentees can express the element as “a means or step for performing a specified function.”  35 U.S.C. § 112(f).  When they do, the claim will be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Id.  Congress thus allowed a sort of shorthand—patentees can detail the structure, material, etc. essential to their invention in other parts of the specification and use so-called means-plus-function (or step-plus-function) language to incorporate those details into the claims.

This week’s case deals with when claims trigger means-plus-function interpretation and what details the specification must give about the corresponding structure, material, or acts.  Rain Computing owns a patent to a method for providing software over a network.  The claimed method requires a step of sending “a user identification module configured to control access” to software.

Does that language trigger means-plus-function interpretation?  The Federal Circuit said yes.  It applied a rebuttable presumption that “user identification module” was not a means-plus-function term because it lacks the word “means.”  It held the presumption rebutted—“module” is “a well-known nonce word that can operate as a substitute for ‘means.’”  That was how the patent here used the term, as a “black box recitation of structure.”  The prefix “user identification” was no help—it “merely describes the function of the module: to identify a user.”  Nor did it matter that the applicant had amended the claims from “user identification module for accessing” to “user identification module configured to control access.”  The “configured to” phrasing was still “purely functional.”  The Court also clarified that method claims can include a “nested” means-plus function term.

Because “user identification module” was a means-plus-function term, the Court asked whether other parts of the patent disclose adequate structure corresponding to the claimed function.  The Federal Circuit rejected the district court’s view that the patent’s disclosure of generic “computer-readable media or storage devices” was adequate structure.  “These computer-readable media or storage devices amount to nothing more than a general-purpose computer.”  But Federal Circuit precedent had long required more than a general purpose computer except in the “rare” situation where any general purpose computer can perform a claimed function “without any special programming.”  The Court held this was not that rare situation, as both the patent owner and the inventor agreed some programming would be required.  And under that precedent, Rain Computing’s claims were invalid for indefiniteness—the lack of adequate corresponding structure meant the patent failed to particularly point out and distinctly claim the invention.