Means-Plus-Function Claim Interpretation: WSOU Investments v Google

On October 19, 2023, the Court of Appeals for the Federal Circuit published a significant decision regarding the interpretation of “means-plus-function” type claims, particularly for claims describing inventions that include processors, controllers, or other software-based programmable electronic devices.  WSOU Investments LLC v. Google LLC, Nos. 2022-1063, 2022-1065 (Fed. Cir. 2023).

Although the decision is designated nonprecedential, it includes a number of interesting points on the requirements for definiteness and disclosure of corresponding structure under 35 U.S.C. §112(f).

I.               Review – What is Means-Plus-Function Claiming?

Means-plus-function type claim drafting permits a patentee to claim features in functional language without explicitly reciting a specific structure. Instead, this “means-plus-function” claim relies on directing the reader to rely on a description of corresponding structure included in the patent specification, referring to the written description and the figures. Although on the surface this provides the applicant or patentee additional flexibility in verbiage in the claimed features, such means-plus-function language can potentially be found indefinite should the specification fail to provide sufficient disclosure of the required corresponding structure. Such a finding of indefiniteness of a claim can resultantly render the patent invalid. In detail, means-plus-function claiming is codified in 35 U.S.C. §112(f) (formerly 35 U.S.C. §112, ¶ 6), which states (with emphasis added):

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 claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Generally, “essential material” may be incorporated by reference where it “is necessary to … [d]escribe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).” See 37 CFR 1.57(d). However, it appears that at least some courts may have been hesitant to find structure in materials incorporated by reference, unless such incorporation is expressly for the purpose of importing that structure.

II.             Summary

The US presents a large and dynamic commercial market, in which many domestic and foreign entities, such as corporations and professional service firms, seek to sell goods and services.

However, US patent practice and related legal interpretation may evolve and move at a different pace than that of other major developed economies and areas, such as Japan, South Korea, Taiwan, China, the United Kingdom, and the European Union.

Notably, US patent applications that are the National Stage of Patent Cooperation Treaty (PCT) International applications may be at risk if such applications are directly translated from their original language of preparation, include the term “processor” in the claim, or otherwise fail to include clear, concise, and complete descriptive text in the specification relating to exactly how the related circuitry and programmable electronic devices are configured to perform specific operations.

To proactively prevent against an unintended consequence in the US, such as potential invalidation of a US Patent stemming from an original foreign filing, non-US-based clients may be well advised to comport their patent drafting preferences and style to that now expected in the US regarding complete, comprehensive, and step-by-step functionality description included in the specification.

III.           Background

Historically, large non-US computer hardware and software related clients may have relied upon inclusion of the term “processor configured to …” in the claims and have assumed that doing so may result in interpretation of such a claim as not being “means-plus-function.”

Nevertheless, patent attorneys now may encourage clients to use the language “circuitry configured to …{function}” since the MPEP cites favorable case law for such an interpretation. See Mass. Inst. of Tech., 462 F.3d at 1355-1356, 80 USPQ2d at 1332 (finding that the recitation of "aesthetic correction circuitry" sufficient to avoid pre-AIA 35 U.S.C. §112, paragraph 6, treatment because the term circuit, combined with a description of the function of the circuit, connoted sufficient structure to one of ordinary skill in the art.)

This simple change of using “circuitry” instead of “processor” may help in avoiding undesirable claim scope interpretation at the US Patent Office and potential later litigation, should the claims be at issue.

IV.           Holding of the Fed. Cir. in WSOU Investments v. Google

In WSOU Investments v. Google, the Federal Circuit held the “processor” in Claim 1 of U.S. Patent No. 8,965,045 (“the ‘045 Patent”) to be a means-plus-function element under 35 USC §112(f).

The claim at issue is reproduced below to facilitate discussion:

1.              An apparatus comprising:

a viewfinder display configured to display a first and second picture, a processor configured to move automatically a sub-set of pixels defining a target captured image that corresponds to the first picture, within a larger set of available pixels in a direction of an edge of the target captured image when a defined area of interest within the target captured image approaches the edge of the target captured image, said processor configured to provide a pre-emptive user output when the sub-set of pixels approaches an edge of the set of available pixels, and the second picture corresponds to the larger set of available pixels, wherein the viewfinder display is configured to display the first picture within the second picture.

Here, the applicant failed to clearly explain to the court the corresponding structure responsible for executing the claimed algorithm of “mov[ing] automatically a sub-set of pixels defining a target captured image that corresponds to the first picture, within a larger set of available pixels in a direction of an edge of the target captured image when a defined area of interest within the target captured image approaches the edge of the target captured image … etc.”

In contrast to finding claim 1 of the ‘045 Patent to be interpreted as reciting means-plus-function elements, the Federal Circuit held that the “processor” recited in Claim 1 of U.S. Patent No. 9,335,825 (“the ‘825 Patent”) was not to be interpreted under 35 USC §112(f):

1. An apparatus comprising of:

detect that an application is being started on the apparatus;

in response to the application being started on the apparatus, turn on a continuous wave doppler radar at the apparatus and transmit radio signals that comprise the continuous wave doppler radar, wherein the radio signals are at least partially reflected by a human body of a user of the apparatus;

receive the transmitted radio signals after having been at least partially reflected by a gesture by the human body of the user;

detect in the received radio signals a predetermined time-varying modulation caused by the gesture by the human body of the user and that is present in a modulation of the received radio signals as compared to a modulation of the transmitted radio signals, wherein detecting the predetermined time-varying modulation of the received signal comprises detecting a doppler frequency shift in the continuous wave doppler radar of the radio signals transmitted from the apparatus, wherein the doppler frequency shift comprises a frequency modulated continuous wave variation caused by the gesture by the human body of the user;

associate the detected predetermined time-varying modulation with a predetermined user input command; and

based on the associated predetermined user input command control at least one operation of the application on the apparatus.

Here, in claim 1 of the ‘825 Patent, there is recited (1) a processor; (2) a memory which includes computer code; and (3) the combination of the processor, memory, and the computer code cause the recited functions to occur.

V.             Patent Drafting and Prosecution Practice Guidance

Given the potential for undesirable interpretation under means-plus-function framework under US patent practice and legal interpretation, several factors may need to be proactively considered by non-US clients seeking to later file US National Stage or other related applications before the US Patent Office.

Such factors may include that the common specification of the original application first filed in a foreign (non-US) jurisdiction include a clear description and illustration of at least the following:

1.     The corresponding hardware responsible for executing each software function;

2.     The algorithm or software which is used to achieve the claimed functionality; and

3.     Claim features are recited in a structural manner that will not invoke 35 USC § 112(f).

VI.           Claim Language

Based on the WSOU Investments v. Google decision, patent practitioners may now recommend that if it is desired for a claim to recite a processor, the claim should be drafted in a similar manner as the Federal Circuit found to be structural (and not means-plus-function) in the WSOU Investment decision. That is, a recitation along the lines of the following:

1.     An apparatus comprising:

at least one processor; and at least one memory including computer program code, where the at least one memory and the computer program code are configured, with the at least one processor, to cause the apparatus to at least: … etc.

VII.         Conclusion

Applicants are now encouraged to draft computer-related claims following the preferred format as indicated in the recent WSOU Investments v. Google decision.

At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. This includes our client’s need to police and enforce their intellectual property rights.  

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