Welker Bearing v. PhD, Inc. (Fed. Cir. 2008)
Mechanism For: Welker’s patent claims a clamping mechanism for holding parts in place when welding. The appeal focuses on construction of a “mechanism for moving said finger.” Affirming a prior similar ruling, the Federal Circuit found that the claim structure “mechanism for [performing a function]” is presumptively interpreted as a means-plus-function claim element.
“The term ‘mechanism’ standing alone connotes no more structure than the term ‘means.'” Quoting MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006).
Instead of claiming a “mechanism for moving said finger,” the patentee could have claimed a “finger displacement mechanism.” Opining on that counterfactual, the Federal Circuit noted that it would not have presumed a means-plus-function construction.
“If claim 1 … had recited, e.g., a “finger displacement mechanism,” a “lateral projection/retraction mechanism,” or even a “clamping finger actuator,” this court could have inquired beyond the vague term “mechanism” to discern the understanding of one of skill in the art. If that artisan would have understood such language to include a structural component, this court’s analysis may well have turned out differently. Instead the applicant chose to express this claim element as “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.””
A reminder here: means-plus-function language is akin to fools gold. Welker’s “mechanism” claim appears broadly written until means claim interpretation doctrine limited to the particular structures disclosed in the specification that perform the claim function and structures that are only insubstantially different. Here, Welker described a linear finger movement which was considered substantially different from a rotational movement.
Means-Plus-Function Equivalents versus Doctrine of Equivalents: Means-plus-function claims are interpreted to cover only structures disclosed in the specification that perform the claimed function and, in addition, any equivalents of those disclosed structures. On its face, this appears duplicative of the traditional doctrine of equivalents (DOE). In this case, the Federal Circuit spells out some differences between the two. Most notably, “an equivalent structure [for means-plus-function analysis] under § 112 ¶ 6 must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.” This statement by the court does not, however, precisely explain the distinction. For means-plus-function claims, court precedent allows the doctrine of equivalents to only capture after-arising technology. [Link] “Indeed this case does not present a case for equivalents under the doctrine of equivalents at all. This case presents only the question of structural equivalents under §112 ¶ 6.”
It is likely that the examiners are also confused about how to read the claim limitations as well.
Going forward, I would argue that USPTO should issue an MPEP rule that makes the applicant’s “specification limited” v “specification unlimited” intent totally clear. This way everyone, including the examiner, can be on the same page.
For example, claims could be worded: “means (specification limited) for moving said finger” v “means (unlimited) for moving said finger”
The proposed MPEP rule would state that this would be understood by the examiner to teach the same thing as: “finger displacement mechanism (specification limited)” v (“finger displacement mechanism (unlimited)”
So examiners will be on clear notice as to exactly how broad the claims really are.
A little leadership could go a long way here.
I have to agree with smashmouth. When we say “means for doing”, “mechanism for doing”, “doing mechanism”, “doing means”, or “doer”, all should trigger means plus function. We don’t allow drafters to evade 112-6 merely by switching out “means” for “mechanism”. We’re trying to get away from magic words. Why should we let drafters evade 112-6 merely by dropping “-ing” and adding “-er” (or “-or”) to the adverb? Likewise, we shouldn’t say “mechanism” in front triggers 112-6 but behind the adverb evades 112-6. There’s still no more structure because it’s still just a mechanism.
At best, the only notable way to stay out of 112-6 SHOULD be when the -er (or “mechanism”) form actually has some inherent structure that has an accepted meaning to PHOSITA in a Daubert sense. For instance, PHOSITA probably thinks of a “box cutter” as one of those $5 gadgets with a retractable blade that you buy at your local home improvement store. So there’s a good reason that “mechanism for cutting boxes” or “means for cutting boxes” triggers 112-6 whereas “box cutter” might not. But it’s preposterous to think that “finger displacement mechanism” or “finger displacer” have any more structure to them than “mechanism for moving said finger” or “means for moving said finger”.
Tell me what a “finger displacer” looks like … now tell me how that differs from a “means for moving said finger.” There’s absolutely zero structural difference.
The ultimate point is we need to get rid of this magic word nonsense. All that happens is that we change magic words every year or two whenever the CAFC gets tired of seeing the drafters catching on to the new magic words. Then there’s more Phillips v. AWH style dissent groaning of how our professionals look like tools because we can’t make up our minds.
Stare decisis doesn’t work when we do 180s on our own rules within 18 months.
JAOI, if you are still here –
Take David French’s example of an eraser, a pencil, and means for attaching the pencil to the eraser.
If your patent discusses ten different ways to attach the pencil to the eraser, this M+F claim will cover all ten. But it won’t cover the eleventh way you forgot to include. So you also want a claim that says “an attaching element” instead of M+F.
I agree with Max Drei, though, that this is not a sensible distinction, since the plain meaning of the two claims is the same. Magic words indeed.
Mr French, this reminds me of the views of the English judiciary, when addressing conferences in Germany. Germany, BTW, copies the USA on DoE, while England will have no truck with it. (But both GB and DE get to the same scope of protection under Art 69, EPC). The English patents judges say “We in England pay great attention to what they do in the USA, not least to avoid the pitfalls they get into, over there. Tip: watch what the Americans do, but don’t necessarily copy it”. To my mind, a DoE destroys legal certainty, with no countervailing merit. The English test is “What (to the objective PHOSITA) was the writer of the claim using the language of the claim to mean?”. It’s a good test, that renders a DoE otiose and also will deliver a just result in cases like Chef America (the 400°F oven).
David French writes:
I have been absent for a while but this one deserves a comment. The source of the problem is that the courts have, in interpreting 35 USC 112(6) adopted the Graver Tank “triple identity” test, namely that something is deemed equivalent if:
1. It performs substantially the same function
2. in substantially the same way
3. to yield substantially the same result.
Element 2 of the triple identity test, that the equivalent must perform in substantially the same way, is very restrictive. Do a wood screw, bolt and nail all perform in substantially the same way? In some respects the answer would be “yes” and in other respects the answer would be “no”. It all depends on the context in which they are being used. And it depends on the “function” that is identified for purposes of comparison.
If you didn’t know about this restrictive aspect of the word “equivalent” you might be tempted to claim: a pencil and an eraser in combination with means for connecting the pencil and eraser together. You might think that you have covered anything that would do the job. But no, the courts would say that the only means covered by the claim would be things that meet the triple identity test based on the description of the preferred embodiments used to exemplify the invention.
Where did Element 2 of the triple identity test, that the equivalent must perform in substantially the same way, come from? I would’ve thought that the Doctrine of Equivalents would function very well without it.
Well Just, I can see how the effort of getting your M+F emission (immediately above)out to Profeesor Crouch might have constrained you to agree with me. My philosophy includes:
1. Complication is good for patent lawyers. If it wasn’t, we would be out of a job, but
2. We don’t need to make things more complicated than they need to be, and
3. Simplicity is like colour: if you (pds) haven’t experienced it, you don’t know what you are missing out on.
Max,
Re: “Boy, the world’s complicated.”
Once again I am constrained to agree.
Dear Tazistan Jen,
Re: “Here is when I use a means plus function claim: in mechanical invention patents when I have talked about a lot of variations on mechanisms and I want a claim that will capture all of the variations. I WOULD NEVER HAVE *ONLY* A MEANS PLUS FUNCTION CLAIMS THOUGH.” (emphasis added).
My question may be naïve, but why would you never have only a means plus function claim?
* * * * *
Dear Professor Crouch,
Re: “Most notably, ‘an equivalent structure [for means-plus-function analysis] under § 112[,] 6 must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.’ THIS STATEMENT BY THE COURT DOES NOT, HOWEVER, PRECISELY EXPLAIN THE DISTINCTION. For means-plus-function claims, court precedent allows the doctrine of equivalents to only capture after-arising technology.” (emphasis added)
What you say may be true, and I, merely an ordinary inventor, have no basis to doubt it. I think it is interesting to note, however, that there was NO NEED for the Welker Bearing v. PhD, Inc. Court to “…precisely explain the distinction” between §112[,] 6 and DOE, as explained in this passage in its Decision on page 14:
“The record demonstrates that PHD’s linear-moving mechanism for finger movement was well known in the prior art and cannot be classified as after-arising technology. SJ Opinion at 706. Thus, where, as here, a proposed equivalent has arisen before patent issuance, “a § 112[,] 6 structural equivalents analysis applies and any ANALYSIS FOR EQUIVALENT STRUCTURE UNDER THE DOCTRINE OF EQUIVALENTS COLLAPSES INTO THE § 112[,] 6 ANALYSIS.” (emphasis added).
Thanks Just. As long as that fish is just the appetiser to the main course with red meat and red wine? The important thing seems to be never to”sip” that white wine, right? After all, the fish has to swim, no?
Max,
No one will have any beef with you about your having white wine with fish.
Gee thanks Eye. I’m touched, that you can see through to my naive child-like innocence. Now me, I think you have been too long in your world of US law, where things are not as simple as they could be. Mark Twain was quite right, but you haven’t yet convinced me that everywhere in the world except for the USA the law is in bad shape, having been allowed to degenerate (in 1973, in the case of the European Patent Convention) to somewhere below the irreducible minimum of complexity necessary to do justice. Have you got any specific evidence to support your contention? I should be interested to receive it.
And can you give me a tip on etiquette when next I travel to the USA. I should never express a preference for wine that is white, is that it? Boy, the world’s complicated.
“make everything as simple as possible, but not simpler” ~ Mark Twain – a great American.
The problem is Max, when you try to use language that is “too simple” you lose the ability to make fine distinctions that are often necessary in the legal world.
Love lawyers or h8te them, I can’t help feeling like I’m explaining how the world works to a child. You’ve got an innocence about you Max…
And I don’t mean that in any kind of white wine sipping way.
Look, I know that you in the USA have learned to live with 35 USC 112 M+F but my point is that the most natural way to use language, in a patent claim, to define the periphery of an inventive concept, is M+F wording. That’s what everybody else in the world does, and it works just fine. When your statute imposes a ridiculous gloss on the plain M+F wording of a claim you transport your patent statute into a fantasy world of magic words that only lawyers understand. Now I can see that readers who are US lawyers will find that quite attractive but, come on, admit it has its downside, and I can’t see anything to redeem it. Can you?
If the claim recited
“a mechanism for moving said finger, the finger including a middle finger, the mechanism having a lever for applying a torque and a cam for urging the middle finger upright toward Mooney”
…there would be no MPF issue.
“It’s for lazy people who don’t get it, for people who want to appear “clever,” and for low brow clients who need to see a certain number and variety of claims before they are satisfied.
I don’t want to read this case”
~ Who, exactly, is lazy? Actually MPF has its uses.
“It will make me sad.”
~ apparently just like everything else in life.
“Has any area of patent law inspired more inane and pointless decisions than identifying and interpreting means-plus-function claims?”
~ yes
“there are three options”
~ no, there are more than three options.
“(2) invoke means-plus-function ONLY when the exact magic words are used, i.e., “means for”; and”
~ Already the law
“(3) invoke means-plus-function when the exact magic words are used or when words are used that are essentially the same as the magic words, i.e., “mechanism for.” ”
~ Close, but not the law. Simply using “mechanism for” will not automatically invoke a MPF interpretation.
“But what happened is that lawyers asserting crappy patents whined and cried to the PTO that it would be oh-so-unfair to require highly paid professionals and/or genius inventors to actually have to pay attention while drafting claims. And so the door was opened for playing games or for generally being a clueless, bumbling twit like the patentee in this case.”
~ or just that the patentee rightfully wanted to include a functional distinction in the claim without resorting to MPF language. Perfectly legitimate.
As far as I can tell Mooney, you are about the only “clueless bumbling twit” around here.
“You just keep talking until their eyes glaze over, then you pour yourself a drink and get back to work.”
people’s eyes glazing over, drinking, then “getting back to work.”
Story of your life eh Mooney?
Dennis writes: “Affirming a prior similar ruling, the Federal Circuit found that the claim structure “mechanism for [performing a function]” is presumptively interpreted as a means-plus-function claim element.”
This is not the law of means plus function. With sufficient structure, the above form, e.g. “mechanism for” would *not* be interpreted as MPF.
“The patentee takes the risk if a defendant can later invalidate it on the basis of any possible mechanism it finds in the prior art.”
No. You are obviously not very knowledgeable about how federal litigation works in the real world. Most federal judges are loathe to invalidate patents, because of the non-statutory, and extremely-difficult-to-apply “clear and convincing” burden of proof. So defendants are forced to either go to trial and try to invalidate a patent, where the downside risk is huge, and the attorneys fees are very, very high or to pay out a settlement that factors the foregoing in. Furthermore, as Judge L. Hand stated long ago, invalid patents act as scarecrows in an industry and we should not make it easier for parties to obtain them. Period.
“Means-plus-function language is akin to fools gold.”
Quoted for truth.
I’d like to see 112p6 ripped out of 35 USC. It’s a great idea that has been horrifically warped into pointlessness by a series of craft-the-logic-around-the-desired-result CAFC opinions.
– David Stein
Ooops: Please delete “ion” in the comment above and insert — e –.
PS:
Don’t you know how to properly punctuation?
Dear patent leather,
Re: “2) woman! without her, man is a savage”
Why is there not a comma instead of a period under your exclamation mark?
In law school, my patent professor wrote the following sentence on the board and asked the class how to punctuate it: (try it first before reading below)
woman without her man is a savage
The class came up with two ways:
1) woman without her man, is a savage
2) woman! without her, man is a savage
Of course, the point the professor was trying to make was in patent law, every little thing counts. Man, he wasn’t kidding!
As a humble layman it has been my observation that all too often a M+F claim is a sign that:
a) someone is trying to broaden scope by claiming all possible ways to accomplish whatever their one embodiment accomplishes, even though all that’s new is their embodiment.
b) someone is trying to get a claim that is, at best, minimally enabled (as in “a processing means for turning lead into gold”)
b1) someone was too cheap (client) or lazy (practitioner) to adequately describe the means.
c) someone hopes that potential competitors will be scared off by the indefiniteness inherent in M+F claims.
Tazistan Jen’s post is one of the appropriate uses. Another is when you really have invented an entirely new class of “thing” which can be accomplished in many different ways [viz., the flip side of a) above].
This case isn’t really new law, as it simply clarifies what is already generally understood. But, it’s wrongheaded. The 112, paragraph 6 option was initially provided, presumably, to give practitioners a shorthand way of narrowly claiming the disclosed embodiments, without having to recite all of the structural elements. If you want the provisions of paragraph 6 to apply, you use the “means plus function” language. But, you are the patent draftsman. You should be able to draft your claim to mean what you want. Here we have another example of courts wanting to erase bright line rules, which provide certainty in life, in favor of deciding things on a case-by-case basis, after millions of dollars are spent in litigation.
So why not allow a claim that recites “mechanism plus function”, and interpret it broadly to mean any mechanism which could perform the function? What’s wrong with that? Examine it broadly in the PTO and reject it if you find prior art that discloses any possible mechanism (they already wrongly treat means plus function claims this way). The patentee takes the risk if a defendant can later invalidate it on the basis of any possible mechanism it finds in the prior art. If there is an indefiniteness problem, reject or invalidate on the basis of 112, second paragraph.
Here is when I use a means plus function claim: in mechanical invention patents when I have talked about a lot of variations on mechanisms and I want a claim that will capture all of the variations. I would never have *only* a means plus function claims though.
“How the heck do you ever explain all this to an intelligent layperson”
You just keep talking until their eyes glaze over, then you pour yourself a drink and get back to work.
Seriously, read the last paragraph of Dennis’ post. I think it’s reasonably concise, clear and accurate. Now imagine forwarding an “update” with that information to some of your lesser-informed clients. LOL.
Just as a friendly reminder, when prosecuting a patent the time to worry about the doctrine of equivalents is: never. The doctrine of equivalents is what you are forced to rely on when your literal infringement case sucks. Worrying about the doctrine of equivalents during prosecution is like getting ready for the SuperBowl by practicing Hail Mary passes every day for two weeks.
Reading how US patent lawyers spend their time playing with “magic words”: I love it. Even better than reading about Gulliver’s travels in Laputa. Seems to me that there are an infinite number of intermediate positions, on the road from “pure” M+F language to “M+F absent” language, where we don’t know whether the court will categorize the language as M+F or not, and which make the statutory provision a laughing stock. How the heck do you ever explain all this to an intelligent layperson with an interest in there being a proper respect for the law of the land (or in asserting his patent against an infringer, or to a competitor of the patent owner, wanting a clearance opinion)? Isn’t it time for a fresh start and a new Patent Statute?
smashmouth, there are three options:
(1) invoke means-plus-function claims ONLY when expressly requested by the patentee (i.e., a statement during prosecution that “claim # is a means plus fxn claim);
(2) invoke means-plus-function ONLY when the exact magic words are used, i.e., “means for”; and
(3) invoke means-plus-function when the exact magic words are used or when words are used that are essentially the same as the magic words, i.e., “mechanism for.”
There is no doubt that (1) or (2) are both perfectly acceptable and reasonable rules for invoking the statutory scheme. But what happened is that lawyers asserting crappy patents whined and cried to the PTO that it would be oh-so-unfair to require highly paid professionals and/or genius inventors to actually have to pay attention while drafting claims. And so the door was opened for playing games or for generally being a clueless, bumbling twit like the patentee in this case.
“A reminder here: means-plus-function language is akin to fools gold.”
It’s for lazy people who don’t get it, for people who want to appear “clever,” and for low brow clients who need to see a certain number and variety of claims before they are satisfied.
I don’t want to read this case but I don’t want to know what the patentee’s argument was for NOT reading the claim as invoking means-plus-fxn. It will make me sad. Has any area of patent law inspired more inane and pointless decisions than identifying and interpreting means-plus-function claims?
Thanks Non Sequitur and JohnDarling. I also read the opinion, but I’m still not quite convinced. But your remarks make more sense than the opinion.
“Tell me, why does the case law insist on what looks like a non-existent distinction?”
Magic words, baby. Magic words.
Perhaps, both will be construed the same. The issue is that “mechanism for moving said finger” practically begs for means-plus-function construction and “finger displacement mechanism” only suggests it. Any distinction would depend on whether “finger displacement mechanism” has a structural significance in the relevant art.
It is sort of like the distinction between a “means for cutting a box” and a “box cutter.” Both describe a function, but a “box cutter” is a specific type of tool that is more specific than its name alone would imply.
Please hold off the attack dogs, my inexperience will show in this question.
Tell me, why does the case law insist on what looks like a non-existent distinction? In other words, why shouldn’t we construe BOTH “mechanism for moving said finger” AND “finger displacement mechanism” exactly the same, i.e., as means-plus-function claims? This supposed distinction by the CAFC seems like nothing more than an arbitrary trap for the unwary.
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