Recalibrating Functional Claiming: A Way Forward

• Author: George W. Jordan III
• Pages: 1-66

Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Perspective

Functional claiming—often viewed as describing subject mat-

ter in terms of what it does (its function) rather than what

it is (its “structure”)—has been frowned upon, feared, and

misconceived by the patent bar for a very long time. Now is an

opportune time to question the status quo of overbroad claiming,

claim-defeating surprises, and linguistic impediments to legitimate

lexicography. To identify the best way forward, two questions are

key: What are the misconceptions, and what should be done to

recalibrate functional claiming standards accordingly?

Misconceptions

All functional claiming is not the same. Unlike functional claim-

ing that only recites a function, means-plus-function claiming

generically recites a “means” for performing a “specied func-

tion.” As a “price” for this “convenience,” 35 U.S.C. § 112(f)

restricts the literal scope of a means-plus-function term to

the corresponding structure disclosed in the specication and

equivalents thereof.1 If the specication fails to disclose that cor-

responding structure, the purely functional claim is invalid for

indeniteness under § 112(b).2 Result claiming is a different

form of generic claiming that recites a function coextensive with

the result accomplished, making compliance with patent eligibil-

ity and written description requirements especially important.3

Another key misconception is that structural claiming is always

preferable to functional claiming. Depending on the technology

and the specic invention, functional claiming may be preferable

and even unavoidable. At times an invention (e.g., one software

based) may be inherently functional or at least functional at the

point of novelty. In the context of software, the law currently

treats an “algorithm” as “structure,” but the “algorithm” deni-

tions relied upon by the U.S. Supreme Court and U.S. Patent and

Trademark Ofce leave no doubt that an algorithm is inherently

functional too.4 Because functional claim language can describe

what a functionally based invention is, we should jettison use of

the misleading words that a claim term is “functional” when it

recites a feature “by what it does rather than by what it is.”

It is also a misconception to consider functional claiming inher-

ently unclear. Although the famous eighth claim in O’Reilly v.

Morse broadly covering telegraphic communication was rendered

void for overbreadth, the U.S. Supreme Court acknowledged the

claim term was understandable: “It is impossible to misunderstand

the extent of this claim.”5 Similarly, in In re Swinehart, the U.S.

Court of Customs and Patent Appeals held the term “transparent to

infrared rays” was “sufciently clear” in light of the specication.6

Recalibration

Halliburton and § 112(f) are essential context for charting a way

forward free of misconceptions. In Halliburton Oil Well Cement-

ing Co. v. Walker, Walker asserted an acoustical resonator claim

reciting means-plus-function language.7 Claims that recited the

acoustical resonator structurally were not asserted against Halli-

burton. In explaining that Walker had claimed the “most crucial

element” in terms of “what it will do” rather than its “physical

characteristics” or “arrangement,” the Supreme Court held that

the functional claim lacked deniteness.8 The Court had previ-

ously condemned the use of “conveniently functional language

at the exact point of novelty,” but means-plus-function language

was not at issue.9 Here the Supreme Court imprecisely blamed

the “broadness, ambiguity, and overhanging threat” of functional

claim language.10 Having upheld means-plus-function claims

before, the Court distinguished its holding in Continental Paper

Bag Co. v. Eastern Paper Bag Co.,11 noting the claims in that

case “structurally described the physical and operating relation-

ship of all the crucial parts.”12

In response to the Supreme Court’s prohibition on means-

plus-function claiming at the point of novelty, Congress

enacted § 112(3)—later § 112(6) and now § 112(f)—to statuto-

rily overrule the Halliburton holding.13 Unfortunately, § 112(f),

which authorized means-plus-function claiming irrespec-

tive of the point of novelty, led to new problems. Instead of a

simple application of § 112(f), before long we gained a rebut-

table presumption in favor of applicability when “means” (or

another generic placeholder term) is recited and a rebuttable

presumption against applicability when absent.14 As a result of

this presumption-driven uncertainty, § 112(f) has persisted as a

trap for the unwary even after the elimination in Williamson v.

Citrix Online, LLC of a “strong” presumption of not invoking

§ 112(f) when “means for” is not explicitly recited.15

As a x, § 112(f) could be amended to strictly apply

whenever a claim term recites a function together with a

“magic word”—whether “means” or not—without reciting

structure for performing the function. Presumption-driven

uncertainty would disappear; § 112(f) would largely cease to

catch patent drafters and others off guard, as it would no lon-

ger apply to nonce or other borderline terms, making them

fair game for indeniteness challenges; and accidental claim

death by indeniteness for lack of corresponding structure in

the specication would become a thing of the past. Especially

given the limits of structural claiming, means-plus-function

claiming should be a chosen endeavor. When patent drafters

George W. Jordan III is chair of the ABA Section of Intellectual

Property Law. As senior counsel at Norton Rose Fulbright in Houston,

Texas, he specializes in patent litigation and investigations with an

emphasis on wireless, mobile, and e-commerce technologies, as well as

licensing and due diligence in all areas of intellectual property law. He

can be reached at george.jordan@nortonrosefulbright.com.

By George W. Jordan III

Recalibrating Functional Claiming: A Way Forward

Continued on page 66

Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Volume 12 • Number 3 • January/February 2020

5 Composing the Law: An Interview with Derrick

Wang, Creator of the Scalia/Ginsburg Opera

A composer, dramatist, and lawyer shares how music and law inuence each

other, and what inspired him to write about U.S. Supreme Court justices.

8 Branding the Band

The band name is an asset that can be protected and exploited for longer than the

band’s copyrights and can be licensed or sold so the band brand can continue

after the expiration of the band members.

By Peter J. Strand

13 Who Owns That Tune? Issues Faced by Music

Creators in Today’s Content-Based Industry

Consider the issues concerning ownership, compensation, and accreditation

faced by music producers given the increasing use and reliance on technology in

the modern music business.

By Adam J. Reis and Manon L. Burns

Columns

1 Perspective

Recalibrating Functional

Claiming: A Way

Forward

By George W. Jordan III

62 Decisions in Brief

By John C. Gatz

Departments

®

®

Editorial Policy: Landslide® magazine provides

articles on contemporary issues in intellectual

property law for practicing attorneys and others

interested in the subject matter. The materials

contained herein represent the opinions of

the authors and should not be construed to be

those of either the American Bar Association,

the Magazine Editorial Board, or the ABA

Section of Intellectual Property Law (ABA-

IPL) unless adopted pursuant to the bylaws of

the Association. Nothing contained herein is to

be considered as the rendering of legal advice

for specic cases, and readers are responsible

for obtaining such advice from their own legal

counsel. These materials and any forms and

agreements herein are intended for educational

and informational purposes only. Landslide

magazine advertisers are responsible for the

content of their ads as printed. The ABA, ABA-

IPL, and its Magazine Editorial Board are not

responsible for the accuracy of ad content. Pg. 8

Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

36 Avoid On-Sale Bar by Filing Early

Both in the United States and China

Post-Helsinn

Examine the “on-sale bar” standard in China and why U.S.

businesses are encouraged to le early patent applications in

both the United States and China.

By JiaZhen (Ivon) Guo, Janice H. Logan, and Weixian Zhu

41 Tethering the Nexus: Framing

the Claims for Unclaimed Features

and Novelty

Explore the evolving legal and litigation landscape concerning

the requirements for establishing a nexus between patent claim

language and objective indicia of nonobviousness.

By Scott F. Peachman

46 “Nonfunctional Descriptive Material”

vs. “Printed Matter”: The PTAB’s

Deance of Federal Circuit Precedent

The PTAB’s “nonfunctional descriptive material” rule differs

from the Federal Circuit’s “printed matter” rule. How do patent

law and administrative law govern the PTAB’s approach?

By David E. Boundy

52 Virtual Inuencers: Stretching the

Boundaries of Intellectual Property

Governing Digital Creations

The rise of computer-generated models in social media has

provoked a wave in inuencer marketing and illuminated

potential issues in right of publicity and copyright law.

By Sonia M. Okolie

58 NASA: Creating IP to Innity and

Beyond

NASA’s innovations have propelled man into space and

beyond but have also been licensed to public corporations for

the benet of those of us who remain on planet Earth.

By Tammy Pennington Rhodes

17 Have I Heard That Before?

Copyright’s Impact on Drawing

Inspiration from Music’s Past

Outside of legislatures and courtrooms, a musicologist

and librarian examines music copyright law from a

perspective of culture and creativity.

By Michael W. Harris

20 An Economist’s View of the

Music Modernization Act: Steps

toward a More Market-Oriented

Approach to Rate Setting

An economist discusses the Music Modernization Act

and its possible effects on the competitive landscape of

music royalty issues.

By Chip Hunter

24 Droit de suite: A U.K. Perspective

on the Artist’s Resale Right

Review the history of droit de suite, or the artist’s resale

right, in the United Kingdom and the development of

the right in the United States.

By Simon T.L. Marshall

28 Organized IP Crime

When a client’s business is suffering from foreign

counterfeiters, a combination of border enforcement,

litigation, criminal enforcement, and enforcement through

the private sector may be employed.

By H. Jared Doster and Paul J. Reilly

Pg. 17

Turn to page 34 for details on the

2020 ABA-IPL Section

Annual Meeting