On June 4, 5, and 11, 2019, the Senate Judiciary Subcommittee on Intellectual Property held hearings on the state of patent eligibility in America.1 These hearings were directed to obtaining testimony regarding draft changes to the patent statute proposed by Senators Tillis and Coons.2 The proposed changes, released on May 22, 2019, can be accessed here.[iii] These proposals appear primarily driven by concerns about section 101, but also contain proposed changes to section 112. As explained by Senator Tillis’ opening remarks during the June 4 hearing:
We didn’t just fix the issues with section 101. We are proposing changes to improve functional claiming requirements in section 112. We believe that we can reach a compromise that addresses the legitimate issues raised by both sides. It restores the broad eligibility requirements of section 101 and simultaneously prevents overbroad functional claiming.[iv]
This article discusses these proposed changes to section 112 and provides an overview of the testimony given in the recent Congressional Hearings regarding these changes and their potential impact on the patent law.
2. Proposed Changes to Section 112, Paragraph (f)
The proposal as currently articulated would change post-AIA section 112, paragraph (f) as follows:
(f) Functional Claim Elements
Element in claim for a combination.—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.[v]
Significantly, the proposed changes would eliminate the “means or step for performing” language in the current statute. The stated rationale for this change, as described in Senator Tillis’ opening remarks, is to prevent “overbroad functional claiming” and is presented as a counterbalance to the proposed section 101 changes. The proposed section 101 changes would eliminate the judicially created exceptions to patentable subject matter and are intended to broaden the scope of patentable subject matter under the statute. An article discussing those changes in detail can be found here (link to IP Report on 101 changes).[vi]
3. Current Section 112 Case Law.
Under the current case law, the application of section 112 paragraph (f) (or pre-AIA paragraph 6) turns on whether the claim term recites the term “means” (or other equivalent term).[vii] The “use of the word ‘means’ in a claim element creates a rebuttal presumption that § 112, para. 6 applies.”[viii] On the other hand, the “failure to use the word ‘means’ also creates a rebuttal presumption” that the statute does not apply.[ix] As stated by the Federal Circuit in Williamson v. Citrix Online LLC, “when a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”[x] Until the Federal Circuit’s decision in Williamson, the Federal Circuit had previously held that the presumption against invoking the statute in the absence of “means” language in the claim was a “strong one that is not readily overcome.”[xi] Pre-Williamson, this presumption could not be overcome “without a showing that the limitation essentially is devoid of anything that can be construed as structure.”[xii]
The Federal Circuit in Williamson recognized that this heightened standard “shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute.”[xiii] Accordingly, the Williamson decision overruled the heightened evidentiary standard for invoking the statute and held that even where “a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”[xiv] Nevertheless, the Federal Circuit still applies a presumption against application of the statute when a claim does not recite the term “means.”[xv]
In the wake of the ostensibly lowered evidentiary standard articulated under Williamson, the Federal Circuit has employed an approach that does not necessarily require the recitation of “means” in the claim, but instead looks for language that may operate as a “substitute” for that term. In Diebold Nixdorf, Inc. v. Int'l Trade Comm'n, the Federal Circuit found that “the term ‘cheque standby unit,’ as understood by one of ordinary skill in the art, both fails to recite sufficiently definite structure and recites a function without reciting sufficient structure for performing that function.”[xvi]
On the other hand, in Zeroclick, LLC v. Apple, Inc., the Federal Circuit found that the district court erred when it “effectively treated ‘program’ and ‘user interface code’ as nonce words, which can operate as substitutes for ‘means’ and presumptively bring the disputed claims limitations within the ambit of § 112, ¶ 6.”[xvii] The Federal Circuit found this erroneous because “the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions.”[xviii] Further, the Federal Circuit reasoned that the district court removed the terms from their context and “made no pertinent finding that compels the conclusion that a conventional graphical user interface program or code is used in common parlance as substitute for ‘means.’”[xix]
The proposed changes to section 112 would presumably make it easier for accused infringers to argue for the applicability of section 112 paragraph (f) and will make the recitation of the term “means” irrelevant. Instead, disputes will likely center on whether the claim element in question is solely “functional” in nature or constitutes sufficient “structure” to avoid the application of section 112, paragraph (f). To illustrate, in TEK Glob., S.R.L. v. Sealant Sys. Int'l, Inc., the Federal Circuit addressed whether the term “conduit” was a nonce word or was instead a recitation of structure.[xx] While the Federal Circuit found the claim language itself was not conclusive, the Federal Circuit found that the specification “clearly contemplates a conduit having physical structure.”[xxi] The proposed limitation would likely increase these types of disputes because the proposal would likely eliminate the presumption that the statute does not apply to functional language merely by omitting the term “means.” Since language that might be construed as solely “functional” would arguably fall into the scope of the statute, the potential for disputes over whether a claim element is “functional” rather than “structural” may increase.
It is unclear to what extent the proposed changes to section 112 will gain traction given that much of the testimony and coverage of the proposed legislation has focused on the proposed changes to section 101 jurisprudence. For example, Professor Mark Lemley of Stanford University testified primarily about section 101, but he described the section 112 paragraph (f) portion of the bill as “a significant improvement to the current law.”[xxii] Professor Lemley further testified that he believed the bill would “narrow the patent to cover what they actually invented and equivalents thereof.”[xxiii]
On the other hand, Professor David Taylor of Southern Methodist University testified that he has concerns with the proposed change, citing a concern that the scope of claims would be “significantly limited” and may prompt patentees to draft more “encyclopedic disclosure,” at potentially increased costs.[xxiv] President Elect of the AIPLA, Barbara Fiacco, also stated that the AIPLA has “some concerns with the proposed amendment to section 112(f).”[xxv] She went on to state:
For example, as drafted the proposed amendment would broadly apply to all claims that use functional language, not just claims using specific functional language such as means-for or step-for or other triggering language. It’s likely—very likely—that there would be disputes over what constitutes functional language. The result could be significant uncertainty, not only about how to draft patents properly under this provision, but also how those claims would be interpreted. Such a development could be even more problematic if the proposed amendment were applied retroactively. [xxvi]
Accordingly, while some support for the proposed changes was expressed during the hearings, many also expressed concerns. Judge Paul R. Michel, former Chief Judge of the Federal Circuit testified “the 112 paragraph (f) portion of the bill probably needs more assessment and work.”[xxvii]
According to recent Congressional testimony, the recently proposed changes to section 112 may potentially impact the cost of drafting robust patent applications and the scope of issued patent claims. On the other hand, others appear to support the proposal’s perceived potential for limiting the issuance of overly broad patents. In the end, it is unclear to what extent the section 112 changes will gain traction in view of the heavy focus on addressing perceived problems with section 101. In any event, as the industry considers the recently proposed changes to section 101, careful attention should also be paid to the proposed changes to functional claiming requirements under section 112.
1 See United States Committee on the Judiciary, Hearing on The State of Patent Eligibility in America: Part I,116th Cong. (2019-2020), https://www.judiciary.senate.gov/meetings/the-state-of-patent-eligibility-in-america-part-i.
[ii] Id. (statement of Senator Thom Tillis).
[iii] See Website for U.S. Senator Thom Tillis, https://www.tillis.senate.gov/services/files/E8ED2188-DC15-4876-8F51-A03CF4A63E26
[iv] United States Committee on the Judiciary, Hearing on The State of Patent Eligibility in America: Part I,116th Cong. (2019-2020), https://www.judiciary.senate.gov/meetings/the-state-of-patent-eligibility-in-america-part-i (statement of Senator Thom Tillis).
[v] Compare Website for U.S. Senator Thom Tillis, https://www.tillis.senate.gov/services/files/E8ED2188-DC15-4876-8F51-A03CF4A63E26 with 35 U.S.C. § 112(f).
[vi] (link to IP Report on 101 changes).
[vii] See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
[viii] Id. at 1348.
[x] Id. (internal quotations omitted).
[xi] Id. at 1348-49 (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir.2004)).
[xii] Id. at 1349 (citing Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir.2012)).
[xvi] Diebold Nixdorf, Inc. v. Int'l Trade Comm'n, 899 F.3d 1291, 1298 (Fed. Cir. 2018).
[xvii] Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)
[xx] TEK Glob., S.R.L. v. Sealant Sys. Int'l, Inc., 920 F.3d 777, 786 (Fed. Cir. 2019).
[xxii] United States Committee on the Judiciary, Hearing on The State of Patent Eligibility in America: Part I,116th Cong. (2019-2020), https://www.judiciary.senate.gov/meetings/the-state-of-patent-eligibility-in-america-part-i (statement of Prof. Mark Lemley).
[xxiv] Id. (statement of Prof. David Taylor).
[xxv] Id. (statement of AIPLA President-Elect Barbara Fiacco).
[xxvii] Id. (statement of J. Paul R. Michel).
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