Gregory Baran v. Medical Device Technologies (Fed. Cir. 2010)
Dr. Baran sued MDTech for infringing his patents covering automated biopsy instruments. Soon-to-be Federal Circuit Judge Kathleen O’Malley over-saw the district court case. After construing several disputed claims, Judge O’Malley ordered summary judgment of non-infringement. On appeal, the Federal Circuit affirmed.
Means-Plus-Function: I’ll focus on an interesting question raised regarding Baran’s means-plus-function (MPF) limitation. The limitation reads as follows: a “release means for retaining the guide in the charged position.”
35 USC 112 p6 provides for MPF claim elements expressed “as a means or step for performing a specified function.” The statute calls for the limitation to be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Federal Circuit precedent has logically added that the statutory “corresponding structure” are structures that perform the claimed function.
What is the Claimed Function?: Here, the Federal Circuit was asked to construe Baran’s MPF element to identify the claimed function. MDTech argued that the claimed “release means for retaining” required a structure that exhibited both a releasing function and a retaining function. Dr. Baran argued that the claimed function was only that of retaining. On appeal, the Federal Circuit agreed with the lower court that the means-preamble “release” added a functional limitation to the claim element.
[T]he claim language recites both a release function and a retention function. Dr. Baran’s argument regarding the placement of the term “release” is unavailing. The relevant inquiry is whether the term at issue is purely functional. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (construing “ink delivery means” to be equivalent to “means for ink delivery” because “ink delivery” was purely functional language); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999) (“[W]hen it is apparent that the element invokes purely functional terms . . . the claim element may be a means-plus-function element despite the lack of express means-plus-function language.”). In the context of the ’797 patent, the term “release” is not an idle description but a vital function to be performed by the means-plus-function element. The patent does not recite a biopsy instrument that retains indefinitely without release; rather, the contemplated function is to retain for the express purpose of producing a spring-loaded release on demand. The claim language ties both functions to the same means-plus-function element, so it is appropriate that the element be construed accordingly.
Although it is difficult to take-away lessons from claim construction decisions, a potential best-practices approach to drafting MPF claims may be to eliminate any adjectives tied directly to the “means.” Of course, my best practice suggestion is intended for those times when you want to draft MPF claims with clarity.
ping and IANAE, obviously you are comfortable with the status quo and actually do not see the problem. IANAE even recognizes the “interference” problem. So, we can agree to simply disagree on this issue.
Looking back, it was a grave mistake for the PTO to not take Donaldson to the Supreme Court.
I aint sure the pause is intentional, but is highly correlated with reg numbers starting with 2 or 3.
It destroys the entire purpose for claims.
Defining and construing terms with reference to the spec destroys the entire purpose for claims? How do you figure? Is the public notice function destroyed when you have to read not only the claims but the rest of the document that gets published along with them? I shudder to contemplate your views on file wrapper estoppel.
Design patents? Get real.
Hey, I keep saying they shouldn’t be patents, but they’re every bit as subject to 112 as utility patents, and their claims are impossible to understand without reference to the spec. To the drawings, no less.
Claims are supposed to “particularly point out and distinctly claim” the invention.
Yes, but they do so in conjunction with the specification. You always have to check the spec for term definitions you might not have expected, and you also have to check the spec for what means-plus-function limitations mean. It’s not like this is a big surprise. It’s black letter law. When you see means-plus-function language, you know exactly where to look to find the particular invention that is claimed. That’s definite, is it not?
If a claim literally covers what you are doing, it gives you pause.
It shouldn’t be a very long pause, once you see “means for”.
ping, OK, got your joke.
As to the other point, two en banc courts have considered and decided the issue of Section 112, p. 6, and p. 2, differently. I can only predict to you that since Donaldson met with almost universal condemnation for the reasons I have been stating, that the court will once again reverse itself and restore In re Lundberg.
Ned – my post was too subtle, no wait, too nuanced for you:
A single means plus function claim – get it – a claim with a single means for (get it? no combination, get it?)
Man, you need to laugh once in awhile.
ping, “in my dreams?” Hardly. Until you have actually been sued where that is the claim structure you will have no idea what I am talking about. Not only has it happened, it became de rigueur in one industry. Each claim merely recited the standard elements of apparatus for that industry. The only thing that varied was the specification and the various improvements that accomplished the novel results.
When there is no requirement that the claim actually define over the prior art within its four corners, what in the world would you expect? Smart patent attorneys soon figure out how to draft claims that read on the entire industry and begin to license them accordingly. If a claim literally covers what you are doing, it gives you pause.
“One could theoretically draft a single means plus function claim”
Only in IMHO-Ned Law Land.
Design Patent claims: ah, but a picutre is worth a thousand words.
Ned,
For all your rambling, “with the invention being claimed differing according to the specification. This is not “particularly pointing out and distinctly claiming”
is wrong as a matter of law. 112 P 6 explcitly allows the pointing out and distinctly claiming to be in the specification – b y l a w. And to add a cheerful reminder – the claims are a part of the specification.
What’s wrong with THAT? You cannot be serious. It destroys the entire purpose for claims.
Design patents? Get real.
Claims are supposed to “particularly point out and distinctly claim” the invention. This is but has been part of the US law since 1836. But now you say that claims can simply refer to the specification and not contain in them any hint of what the invention is. Claims in every case in a particular field can have the same elements – with the invention being claimed differing according to the specification. This is not “particularly pointing out and distinctly claiming” the invention. It is everything but that. It is wrong in the extreme!
What does this imply? That the same claim could appear in every computer application, every disk drive application, every microprocessor application – word for word identical with the claims and other such patents, and be entirely proper.
Sure. What’s wrong with that, other than the mess of interference proceedings?
Everyone knows the claim is interpreted in light of the spec, and the applicant is free to define his terms as he pleases in the spec, and 112 6th makes it explicit that you can’t read a means-plus-function claim without referring to the spec for the underlying structure. Even the file history, which isn’t in the spec at all, can change what claims mean. It’s completely normal and expected that identical claim terms might mean different things if you change the application in which they are included, and as a result the claims themselves will have different scope.
After all, back when omnibus claims were common, don’t you think a few applications might have had similar-sounding claims? What about the claims of design patents?
IANAE, computers, microprocessors, disk drives, and other computer components generally have the same overall structure. Improvements come by improving one or more of these structures. One could theoretically draft a single means plus function claim generally describing the elements of computers, microprocessors, disk drives and other computer components that would apply to every such computer, microprocessor disk drive or other computer components. According to you, such a claim, would properly claim the improvements in any of the elements of the claim without actually identifying what the improvement is in the claim itself. What does this imply? That the same claim could appear in every computer application, every disk drive application, every microprocessor application – word for word identical with the claims and other such patents, and be entirely proper.
I hope you can see now just why you are wrong.
IANAE, you actually know very little about the history of functional claiming.
I’m not really that interested in what the law was like before the law was changed.
Now, as to claim construction, the first step as always is that a claim covers what it says it covers.
Okay, we’ll start with that unhelpful tautology. But surely it yields to all the other rules of claim construction, such as what the claim means to a person skilled in the art (as opposed to the lawyer or judge reading it for its “plain meaning”), terms defined in the specification differently from their apparent meaning, and statutory provisions that tell you the claim doesn’t say what you think it says.
Which brings me right back to my original point. You can’t know what a claim means until you’ve construed that claim, and it doesn’t matter what the wrong interpretation of the claim seems to cover. You can’t say a claim is indefinite because there are both a right way and a wrong way to understand it.
On review, the ignored the rule of construction. They simply did not understand it.
So what? That doesn’t make it a bad rule. It means either the jury wasn’t as “properly” instructed as they thought, or they had a particularly dim jury pool, or the judge should be asking the jury only to decide facts and then apply the law himself, or it’s a bad idea to herd people off the street and expect them to understand enough law to make these important decisions in complex areas of civil law.
IANAE, you actually know very little about the history of functional claiming. I have given it to you numbers of times here, including references to the Westinghouse case. There is also a separate line of authority for composition and artilce claims, that are not “combinations” like machine and methods.
Perhaps if you would take your time to actually read these cases, such as Westinghouse and Perkins Glue, you might reconsider what you just said.
Now, as to claim construction, the first step as always is that a claim covers what it says it covers. Now in a AIPLA mock case, the jury was given a MPF claim and was properly instructed on the rule of construction. The jury came back with a verdict of infringement. On review, the ignored the rule of construction. They simply did not understand it.
Ned: IANAE, so, if you like referring to the specification to ID the invention,
… then you’re being your own lexicographer.
You can’t properly understand a claim without reference to the spec anyway, means-plus-function or not.
Ned: Your words about “construction” really are a non sequitur as you actually appear to be ignorant of the problem.
The problem is “what does this claim mean, exactly?”, with the follow-up problems of “is the meaning of this claim indefinite?” and “does the meaning of this claim include the prior art?”.
There’s a reason they do the Markman hearing before the trial and not after. It’s because the validity of the claim depends, surprise surprise, on what the claim means.
Ned: After all, the lower court had actually applied the rule of construction that now appears in 112, 6?
Sure, but at the time that was not the correct legal way to construe a means-plus-function claim. Now it is.
IANAE, so, if you like referring to the specification to ID the invention, why not abandon peripheral claiming entirely? There is a real and good reason we gradually went from central claim to peripheral claiming. Now, what could that be?
Your words about “construction” really are a non sequitur as you actually appear to be ignorant of the problem. What was the Supreme Court so incensed about in Halliburton? After all, the lower court had actually applied the rule of construction that now appears in 112, 6?
Ned: The obvious problem here is that the claim, before construction, literally covers the prior art. It further provides no hint at the novelty disclosed.
No, the obvious problem is that for some reason you care what the claim means “before construction”.
Construction is the process by which we determine what a claim means. If you skip that process, whatever meaning you arrive at is completely irrelevant to anything.
But, why in the world should the PTO be stripped of all means at its disposal to cabin the functional definition
It’s not “stripped of all means at its disposal”. It’s subject to one single statutory rule of construction that only applies to an awkward, apparent, and rare-ish style of claiming. Why should they be subject to that rule? Because it’s the law. Same reason they have to let you swear behind references and argue against combining references for 103 and all that other good stuff. It’s the law, and the PTO exists only to support the statutory framework.
AI, ugh! and nonsense.
Point of novelty does not apply with respect to certain issues: obviousness and patentablity being two.
However, novelty concerns claim element by claim element, limitation by limitation. Ditto the all elements rule for equivalents. Ditto the “most crucial” elements for exhaustion.
Further dittos for written description support, new matter and Section 112, p. 2.
Which is where the Supreme Court (written description, enablement, and indefiniteness) was at with the claims in Westinghouse and Halliburton.
AI, nice try, but you fail patent law 101.
As to what Congress overruled when it adopted Section 112, p. 6 is an open question, as the Supreme Court never said that claiming old elements using means plus function claim elements was wrong. Such claim terms continued to be valid. Arguably, the only thing overruled by Section 112, p. 6, were claims functional at their point of novelty. They were now permitted, but the rule of construction applied.
So, if Congress specifically passed Section 112, p. 6 to allow claims that are functional at their point of novelty, just how can that apply if it not possible to have claims functional at their point of novelty?
Ned Heller,
You logic suffers from a fatal error.
Every time you reference old case law that has been legislated into oblivion, every time you reference Supreme Court holdings that have been replaced by newer holdings, your arguments are built on error.
One of the holdings in Diehr that you are violating and that spoil your position is your reliance on “point of novelty“.
Claims must be read as a whole!
Long live Diehr!
“1. A hypothetical means-plus-function claim literally reads on the prior art, because “means for whatever” could literally mean any way of performing that function.”
Nonsense. Are you saying every function has already been performed?
means for generating a negative gravity field.
Find me the prior art that reads on please.
IANAE, we have discussed this before. A specification discloses a particular means or steps for curing cancer. The claim’s point of novelty claims “a cure for cancer” in functional terms as “means or steps for curing cancer.” Cures for cancer existed before. New cures will be invented.
The obvious problem here is that the claim, before construction, literally covers the prior art. It further provides no hint at the novelty disclosed.
After construction it covers the disclosed cure and equivalents. But, why in the world should the PTO be stripped of all means at its disposal to cabin the functional definition so that it not only defines over the prior art, but also includes at least some of the critical novelty disclosed.
Note, both the AIPLA and ABA adopted resolutions on this topic after Donaldson. Neither one was favorable to the Fed. Circuits decision.
All, the Supreme Court has many times expressed its view that extending the scope of a claim to include subject matter not an equivalent of the disclosure is both a violation of written description and enablement. In Westinghouse, they limited the functionally expressed claim to the corresponding structure and equivalents. In Halliburton, they held such claims to be per se indefinite as they could arguably cover non equivalents and would, due to their indefiniteness, have an in terrorem effect on future “independent” inventions of others.
Congress then passed Section 112, p. 6. The CCPA, in In re Lundberg, held that Section 112, p. 6 does not override the requirement of a claim to define the invention without resort to the corresponding structure. Lundberg was somewhat, but not entirely, overruled in Donaldson.
The Donaldson court also held that Section 112, p. 6, applied to the PTO.
however, it remains a vice if the claim literally reads on the prior art.
Let’s review.
1. A hypothetical means-plus-function claim literally reads on the prior art, because “means for whatever” could literally mean any way of performing that function.
2. The law (112 6th) tells you that the literal meaning of a means-plus-function claim is not the correct construction, and also prescribes the correct construction.
3. Suppose further that under the correct statutory construction the claim is valid over the prior art. Otherwise 112 6th won’t save it anyway, and this whole discussion is moot.
4. Therefore, the claim reads on the prior art only if you deliberately take a legally incorrect construction.
Who cares? Why is that such a problem? I can make any claim read on the prior art by construing it the wrong way. The fact remains that in doing so I have construed it in the wrong way, and therefore my conclusion of invalidity is meaningless.
As I suggested in another thread, why wouldn’t the prior art be deemed an equivalent as a matter of law if the prior art performs the same function in the context of the other elements.
That depends on what “equivalents” means in 112 6th. Granted, we have a long history of disagreeing on matters of statutory construction, but it seems to me that those equivalents are equivalents of the corresponding structure. Equivalents of the function would make 112 6th meaningless.
MaxDrei, Westinghouse v. Boyden, Ned? No I don’t recall reading it (but I have heard of it). Let me guess, is that the one that prompted Congress to pop M+F into the Statute?”
No, Westinghouse is the source of the rule of construction now found in Section 112, p. 6, when a functionally claimed element (the point of novelty) reads on an accused device that is not the equivalent of the disclosed structure.
Ping: ,”but since the language of the claim literally reads on the prior art, the court be well within its rights to hold the claim invalid as indefinite.”
Ned, how would literally reading make a claim indefinite?
Is this another IMHO-Ned Law definition?”
No, it was the holding in Halliburton — by the Supreme Court nonetheless. If the most crucial element is expressed functionally, it is per se indefinite because it literally reads on subject matter not disclosed or enabled. Now, Section 112, p. 6, could be read that this is no vice for the future due to the construction clause; however, it remains a vice if the claim literally reads on the prior art. As I suggested in another thread, why wouldn’t the prior art be deemed an equivalent as a matter of law if the prior art performs the same function in the context of the other elements.
Don’t “drink the Kool-aid” Sarah. That would be a means to the wrong function.
My point, IANAE, is that 112 6th is a joke and should be disposed of for the good of all.
I’ll only meet you halfway on that one.
I don’t see why anybody should ever have to resort to means-plus-function language in order to properly claim their invention. But assuming they do, 112 6th is less bad than what the courts did in that case Ned keeps citing.
Structure-for-function is clearly structure with intended use, but (not-structure)-for-function can’t really be intended use because the lack of structure is non-limiting. The only way to understand the claim is to treat the function as the structure, which is what 112 6th does in its own awkward way.
My point, IANAE, is that 112 6th is a joke and should be disposed of for the good of all.
Not that this is an intended use case, pingerdoodle.
for = intended use, not function.
“means for” = function
silly me, it should have been MPU, not MPF all along.
and here I thought that you were gonna chime in with a “structures that perform” is a mixed class comment.
“release means for retaining the guide in the charged position.”
for = intended use, not function.
“but since the language of the claim literally reads on the prior art, the court be well within its rights to hold the claim invalid as indefinite.”
Ned, how would literally reading make a claim indefinite?
Is this another IMHO-Ned Law definition?
Ned
I see your point: in effect “capturing means” v. “capturing lever”. If the disclosed structure is a lever and its function is to capture something, is one really any better than the other? “means” *ought* to be broader than “lever”, but hey-ho.
Malcolm, I was thinking that, in Europe, M+F is no more vulnerable to attacks than any other claim form of the same scope whereas, in the USA, M+F is fertile ground for any party wanting to jack up the number of issues in the litigation, and so to ratchet up the cost of the suit.
I posted my bit about BRE before I read the contributions just above.
Westinghouse v. Boyden, Ned? No I don’t recall reading it (but I have heard of it). Let me guess, is that the one that prompted Congress to pop M+F into the Statute?
Therefore by its simple plain language contained wholly within section 112, paragraph 6 itself, the construction it was referring to was plainly and intentionally limited to constructions in courts and proof of infringement. It plainly and clearly and intentionally had nothing to do with claim construction in the patent office without saying so in so many words because of the use of the term “equivalents.”
I don’t see how that conclusion logically follows. Why couldn’t the PTO start using equivalents in its construction? Especially since the law seems to require it. Equivalents is about how to construe, not who does the construing.
I find your interpretation pretty strained, especially considering how many other, much more explicit terms Congress could have used if it wanted 112 6th to apply only in court – words like “issued”, “patent”, and “court”.
Which brings me back to a claim which literally read on the prior art. In the patent office, the claim would be anticipated. In court, it would not be;
All the more reason for the PTO to apply the proper legal construction. BRI is strictly an issue of fact – the PTO is not entitled to interpret the claim broadly if such broad interpretation is contrary to law.
IANAE, in a prior thread you said that section 112 paragraph 6 has no indication that it was intended to be limited to claim construction in courts and not to claim construction in the patent office. This essentially was also the holding of the en banc Federal Circuit in In re Donaldson.
However, the “construction” clause further includes “equivalents” as a mandatory term of construction. I hope you would agree with me that “equivalents” historically had nothing to do with claim construction in the patent office and has historically had every to do with claim construction and proof of infringement in courts. Therefore by its simple plain language contained wholly within section 112, paragraph 6 itself, the construction it was referring to was plainly and intentionally limited to constructions in courts and proof of infringement. It plainly and clearly and intentionally had nothing to do with claim construction in the patent office without saying so in so many words because of the use of the term “equivalents.”
Which brings me back to a claim which literally read on the prior art. In the patent office, the claim would be anticipated. In court, it would not be; but since the language of the claim literally reads on the prior art, the court be well within its rights to hold the claim invalid as indefinite.
Thanks EG. I see that it all hangs on that very difficult judgement, what stuff is “equivalent” to that which is particularly described in the specification.
Actually, this reminds me of our difficulties over here in the EPO, during prosecution, when we try to amend using a word string that is not one of those used in the application text originally filed but is (one might well say) equivalent to it.
In both situations, it is easier to hold that nothing is equivalent, rather than deliver a reasoned Decision what is equivalent and what is not.
Presumably though, a USPTO Examiner will apply the prior art to an M+F claim as if everything in the art is “equivalent”. Is not that file wrapper helpful, in litigation later, as to the scope of the claim as understood by the public, in good faith, from the public notice PTO file wrapper?
Max M+f claims can be vulnerable to such counter-attacks but, I would say, no more vulnerable than any other sort of claim.
Well, since they include “every structure under the sun” that performs a given structure, they must be more vulnerable to validity attack then the recitation of a single non-generic structure.
MPF claims are rarely, if ever, clear and almost always a pain to construe, which is why I like to add one to each application to increase competitors’ cost of analyzing my clients’ patent portfolios.
LOL. Nothing unethical here, folks. Move along.
Hagbard, I too have never fully understood why American practitioners have tended to avoid means plus function claim language. While it is true that it covers only the corresponding structure – it also covers equivalents thereof. If one reads the Philips case, ordinary structural terms are interpreted somewhat similarly in that for determinations of infringement one identifies the infringing structure by its function. In the Philips case, the structure was a “baffle.” The determination about what a baffle is went something like this: a baffle is something that performs the function of a baffle (in the accused device)
But the most interesting aspect the means plus function claim elements is that is very difficult to have these claims found invalid unless the entire invention is actually disclosed in the prior art. Similarly, these claims are very useful during re-examinations to combat the somewhat perverse doctrine of broadest reasonable interpretation that the examiners so wantonly employ to misinterpret claims in order to read them on prior art.
Interesting conundrum we have here in that by using some structure we can avoid the limitations of section 112, paragraph 6, and still broadly claim the functions we want to have broadly construed.
The real conundrum is that when you walk that line you risk having some judge (or three) decide you didn’t claim quite enough structure, at which point you’re stuck with 112 6th whether you like it or not.
Hagbard, the problem is that to qualify under section 112, paragraph 6, the claim has to be “wholly functional.” Because “lever” is a known structural term, the claim is not wholly functional.
But one of the term “capturing?” Is it merely a label? Or is it intended to be functional? If the latter, it covers every lever (in the context of the other claim elements) that performs a capturing function without any reference to the specification and to how the specification’s lever functions and without regard to the particulars of its arrangements or structures.
Interesting conundrum we have here in that by using some structure we can avoid the limitations of section 112, paragraph 6, and still broadly claim the functions we want to have broadly construed.
Among the numerous things I don’t really get about US patent practice (chief among which is why the USPTO ever tolerated the scattergun approach to claiming so beloved to y’all), what I REALLY don’t get is the prevalance of the “MPF – don’t do it” and “don’t mention the *invention*” mentality. I mean, I get why people have it, but surely the correct answer is to use MPF and *invention* carefully and properly, not to run away from them?
Max, have you ever read Westinghouse v. Boyden Power Brake?
“a capturing lever”
Well, in the absence of an accepted meaning in the art, you would look at the description to see what it meant and you’d be back to the disclosed structure, and any relevant discussion thereabout, plus equivalents, no?
Over here M+F has its place. Such claims simply embrace every structure under the sun that has the stated function. So, they are usefully broad for infringement purposes ( as in the case we are here discussing) but correspondingly broad also for prior art attacks.
In Europe, validity post-issue hangs on the preponderance of evidence, So, patent owners often fail to resist counter-attacks by the infringer, on the validity of the asserted claims. M+f claims can be vulnerable to such counter-attacks but, I would say, no more vulnerable than any other sort of claim.
So, it often amuses me how contorted are the US-drafted claims we get sent. Often I am thinking: why couldn’t they just recite as claim 1 the words of the paragraph in the “Summary” section of the specification that states in uncomplicated language what the subject invention is. I suspect that the answer is the purely domestic minefield of 35 USC 112 (6).
“a capturing lever”
Means plus function?
MaxDrei,
As Anon stated, what I’m addressing is the restrictive interpretation by the Federal Circuit of “corresponding structure” and “equivalents thereof” language in paragraph 6. As interpreted by the Federal Circuit, “eqivalents” is interpreted very narrowly, basically only those specifically exemplified by the specification; that’s why most of us patent prosecutors in the U.S. avoid MPF claims. That’s not necessarily what Congress intended.
This problem may be, as you suggest, an issue that Congress created, not the Federal Circuit. But getting Congress to rectify such “oversights” without creating additional thorny questions isn’t one of their strong suits.
That would be a local peculiarity, right, and a direct consequence of 35 USC 112.
Yes, Max. MPF claims are a nightmare in the U.S. because the statute mentions “the corresponding structure” and “equivalents thereof” — which can be nasty inquiries under U.S. law. But I take it from your comment that you love MPF across the pond?
That’s all well and good, but the other claims matter too.
True, IANAE. You need infringable claims, not just ones that are painfully difficult to construe.
think maybe we could all do with a coffee to negotiate this particular area of law… and maybe a little bit of cake too!!
EG I’m curious. Can you say more. For me, the current Federal Circuit jurisprudence matches what the statutory language says to me. So, I hold the Congressional draftspeople responsible for the debacle, not the denizens of the CAFC.
Dennis,
I’ll consider using MPF claims again when the Federal Circuit returns to rationally and realistically interpreting paragraph 6 of 35 USC 112 as it was intended to be interpreted. At the moment the Federal Circuit doesn’t, plus there are other ways to describe such elements, including using “coined” (and applicant defined) terms.
I like to add one to each application to increase competitors’ cost of analyzing my clients’ patent portfolios.
That’s all well and good, but the other claims matter too. There are two patents in this case, and for some reason only a single MPF claim in each patent was asserted. That can’t be a coincidence.
If this guy couldn’t assert a single proper apparatus claim, either his claims were poorly drafted or the defendant wasn’t using what he really invented. Or somebody stopped thinking before they began drafting.
Full of laughs already, this thread. Like anon’s M+F language is “rarely, if ever, clear” and oh so very handy when obfuscation is what is called for. That would be a local peculiarity, right, and a direct consequence of 35 USC 112.
Wonderful. More please. I’m looking forward to a nice long amusing thread.
drafting MPF “with clarity”??
HA! Thank you for a much-needed Wednesday laugh!!!
MPF claims are rarely, if ever, clear and almost always a pain to construe, which is why I like to add one to each application to increase competitors’ cost of analyzing my clients’ patent portfolios.
This must be a riddle. Coffee is for waking up. I need to drink some Coffee. What about the Kool aid? Any good?
If you find yourself wrtiting stuff like “release means for retaining” then it’s definitely coffee time.
Shouldn’t the blanket rule be, “people writing patent claims should refuse to think”?
I’m serious here, folks. Obviously one has to do a great deal of thinking before one begins writing a claim. But one shouldn’t try to think and write simultaneously. When writing leads to thinking, it’s probably time to stop writing.
I’ve been silenced on My computer by someone. I can’t comment. I mail and mail and nothing gets to where it is going. If it gets there it disappears. But I can use this Computer though. I have been in a box for as long as I can remember. But I can think about everything that has happened. I can match date for date. For every action a reaction. It’s amazing what a good memory and time to match and discover things can do.
And all I need is a Box Cutter. And finally I think, what’s this? There is a light bulb switch. CLICK! I think what I have in this box is starting to get some attention. It is gathering some steam. I think I can I think I can….. I know with a box Cutter I can.
Metis
DC why is your suggestion not: “Do not use MPF?”
Because blanket rules are for people who refuse to think, and people who refuse to think shouldn’t be writing patent claims?
DC why is your suggestion not: “Do not use MPF?”
Damm all this functional language – we should fix this – quick get me my screwdriver, er um wait we need some equipment – grab me those resistors, um wait – this functional language thingie is worse than we thought – better get me Captain Ahab. whatta ya mean he’s off whalin?
You could also cherish redundancy, as the Japanese apparently do, and write “retaining means for retaining the guide in the charged position”. It lets you thereafter write “said retaining means” but doesn’t add any extra limitations to the claim.
Of course, my best practice suggestion is intended for those times when you want to draft MPF claims with clarity.
Classic.
“Of course, my best practice suggestion is intended for those times when you want to draft MPF claims with clarity.”
But an MPF claim with clarity is at least a bit of a stretch in itself. Some might find a further opportunity to obfuscate in this decision, as well.
Comments are closed.