Means-Plus-Function
| Author | Ronald D. Slusky |
| Pages | 187-205 |
CHAPTER THIRTEEN
Means-Plus-Function
Section 112(f) of the patent statute (formerly designated as its “paragraph
6”)1 says that an element in a claimed combination may be expressed as a
means or step for performing a specified function without the claim hav-
ing to be more specific about, for example, the structure that makes up
a recited means or the acts (sub-steps) that make up a recited step. The
exact language is as follows:
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 [emphasis added].
As noted in Chapter Twelve, section 112(f) was enacted to statuto-
rily overrule the holding in Halliburton v. Walker and thereby return the
law to its pre-Halliburton state.2 Halliburton, recall, had held that a claim
that is functional at the point of novelty is, ipso facto, invalid. The prior
law had held such a claim to be invalid, however, only if the functional
language was such as to render the claim unduly functional as defined in
Chapter Twelve.
The Federal Circuit, by contrast, has made the law of means-plus-
function more restrictive than it was prior to Halliburton. It might well be
said that, in doing so, the court has thwarted congressional intent, even
while professing to be implementing it.
3
1. As of September 16, 2012, § 112 is divided into subsections (a) through (f) corre-
sponding to what were previously referred to as ¶¶ 1 through 6.
gress enacted the last paragraph to statutorily overrule the holding in Halliburton); In re
Fuetterer, 819 F.2d 259, 264 n.11, 138 USPQ 217, 222 n.11 (CCPA 1963) (noting that it was
Congress’s intent to restore the law regarding broad functional language in combination
claims to its state prior to Halliburton).
3. The reader is referred to the excellent review of the history of the enactment of
§ 112(f) (originally § 112, ¶ 3 and later ¶ 6), Rudolph P. Hofmann Jr. & Edward P. Heller III,
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188 CHAPTER THIRTEEN
At the heart of the problem is the Court’s application of section
112(f)’s last clause (in italics above) and, in particular, the words “and
equivalents thereof.” It is not clear from the record what Congress
intended by this language.4 But what is clear is that the Federal Circuit’s
interpretation cannot be what Congress intended, since the Court’s rul-
ings have not returned the law to its pre-Halliburton state but to some-
thing much more limiting.5
Means-Plus-Function Claim Breadth
One issue is the breadth to be accorded to a means-plus-function element.
Prior to Halliburton, a means-plus-function element was understood to
encompass anything that performed the recited function, subject only to
(a) the possible limiting effect of language modifying the word “means,”
The Rosetta Stone for the Doctrines of Means-Plus-Function Patent Claims, 23 R C-
& T. L.J. 227 (1997).
4. See generally Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608–09
(1950); Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1377, 87 USPQ2d 1308 (Fed. Cir.
2008).
5. One reading the opinions rendered by the Federal Circuit over the past 20 years
or so could not be faulted for coming away with the impression that the permissibility of
means-plus-function claiming originated with the 1952 Congress. That is certainly not the
case. Means-plus-function recitations appear in patents issued at least as early as 1898.
12
17
16
24Y
12
10
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24Y
10°
85°
83°
118°
100°
=0°
140°
137°
133°
103°
26° 40°49°
53°
60°
65°
80°
FIGURE 13–1 The invention in Valmont Industries.
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