2019 Guidance Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112
2019 Guidance Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112
By Ellen Smith and Derek Kim
On January 4, 2019, the United States Patent and Trademark Office (“USPTO”) issued examiner guidance for examining definiteness of functional claim limitations under 35 U.S.C. § 112. Although the new guidance does not have the force of law, it is important to have a comprehensive understanding of this guidance because it will affect how claims will be examined under § 112.
In short, the patent examination process under § 112 ensures that the claims of an application have proper written description and enablement support under § 112(a) in the disclosure of the application, and that functional limitations (i.e., claim limitations that define an element in terms of the function it performs without reciting the structure, materials, or acts that perform the function) are properly treated as means (or steps) plus function limitations under § 112(f) and sufficiently definite under § 112(b).
The guidance focusses on software patents because courts have recognized a problem with broad functional claiming without adequate structural support in the specification. The USPTO guidance proposes to address this recognized problem in which the Federal Circuit stated that “[s]oftware patents typically…describe, in intentionally vague and broad language, a particular goal or objective [of the software].”
35 U.S.C. § 112(f)
In Williamson v. Citrix Online, LLC, the Federal Circuit recognized that some of its prior opinions established a heightened bar to overcome the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112(f).  The court concluded that such a heightened burden is unjustified and held that “[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
Specifically, instead of using the term “means” (or “steps”), a substitute term can act as a generic placeholder for the term “means” where that term would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. In other words, when a claim term does not recite “means” (or “steps”), the presumption that § 112(f) does not apply can be overcome 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. For example, terms such as “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for” may invoke § 112(f) claim interpretation.
With respect to § 112(f), examiners will apply § 112(f) to a claim limitation to determine if it meets the 3-prong analysis set forth in the Manual of Patent Examining Procedure (“MPEP”). The 3-prong analysis includes evaluating whether (1) the claim limitation uses the term “means” (or “step”) or a generic placeholder, (2) the term is modified by functional language, and (3) the term is modified by sufficient structure, material or acts for performing the function.
In addition, in order to determine whether a word, term, or phrase coupled with a function denotes structure, the new guidance tells examiners to check whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art-recognized structure to perform the claimed function.
35 U.S.C. § 112(b)
The guidance provides that for a computer-implemented claim limitation under § 112(f), the specification must disclose an algorithm for performing the claimed specific computer function, or the claim is indefinite under § 112(b). In support, the guidance provides that in Noah Sys., Inc. v. Intuit Inc., the Federal Circuit has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. In other words, special purpose computer-implemented § 112(f) claim limitations will be indefinite under § 112(b) when the specification fails to disclose an algorithm to perform the claimed function.
Notably, the guidance warns that the requirement for the disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software to convert a general purpose computer to a special purpose computer to perform the claimed function. For example, the Federal Circuit disagreed that “a microprocessor can serve as sufficient structure for a software function if a person of ordinary skill in the art could implement the software function,” and held that “a person of ordinary skill in the art plays no role in determining whether an algorithm must be disclosed as structure for a functional claim element.”
The guidance also warns that the disclosed algorithm must be able to perform all of the claimed functions. For example, when the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the specification is treated as if it disclosed no algorithm.
Lastly, the guidance provides that a computer-implemented functional claim may also be indefinite when the 3-prong analysis for determining whether the claim limitation should be interpreted under § 112(f) is inconclusive because of ambiguous words in the claim.
35 U.S.C. § 112(a)
With respect to the written description requirement under § 112(a), the guidance explains disclosure requirements for computer-implemented inventions claimed in terms of their functionality. The guidance provides that “[f]or computer-implemented functional claims, the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software […] due to the interrelationship and interdependence of computer hardware and software.” More specifically, it provides that “[w]hen examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.”
In Vasudevan Software, Inc. v. MicroStrategy Inc., the Federal Circuit evaluated “whether the specification shows possession by the inventor of how accessing disparate databases is achieved.” Here, the Federal Circuit found that expert testimony raised “a genuine issue of material fact on whether the specification shows how to achieve the functionality of accessing disparate databases.” The guidance explains that the Federal Circuit concluded that there was a genuine issue of material fact as to whether the inventor had possession of an invention that achieved the claimed result based on the expert testimony that “specific portions of the specification explain ‘that serialized files can be used to correlate parameters from two databases,’ and that ‘those correlation parameters can be used to identify data in one database that is correlated to data in another.’”
With respect to enablement requirement under § 112(a), the guidance points out that “[n]ot everything necessary to practice the invention need to be disclosed.” The guidance notes that this is of particular importance with respect to the computer-implemented inventions due to the high level of skill in the art and the similarly high level of predictability in generating programs to achieve an intended result without undue experiment. Thereafter, it warns that “applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art.”
In view of the recent guidance, patent applications directed to computer-implemented inventions will receive heightened scrutiny under 35 U.S.C. § 112 during examination. We will assess how much impact this new 112 guidance will bring with respect to the allowance rate of software patents in the upcoming months. Meanwhile, applicants are advised to be particularly mindful when drafting patent applications directed to computer-implemented inventions, in order to ensure the inclusion of sufficient structural elements in the specification that carry out the functional limitations, and described with enough detail to show that the inventor had possession of how the functional limitation is achieved at the time of filing.
 See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J., concurring).
 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
 See id.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 5 (citing Williamson, 792 F.3d at 1349).
 See, e.g., MPEP §2181, subsection I.A.
 MPEP (9th ed. Rev. 08. 2017, Jan. 2018).
 See MPEP §2181, subsection I.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 10 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
 See Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
 See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015); See also In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)(stating “when the disclosed structure is a computer programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.”)
 See id.
 See Noah Sys., Inc. at 1319.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 18.
 See id.
 See Vasudevan Software Inc. v. MicroStrategy Inc., 782 F.3d 671, 683 (Fed. Cir. 2015).
 See id.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 19 (citing Vasudevan, at 683).
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 21 (citing Trs. of Bos. Univ. v. Everlight Elecs. Co., LTD., 896 F.3d 1357, 1364 (Fed. Cir. 2018)(explaining that while “the specification must enable the full scope of the claimed invention[,]” “[t]his is not to say that the specification must expressly spell out every possible iteration of every claim.”).
 See id.
 See id; See also MPEP § 2161.01, subsection III, and MPEP § 2164.08.
PTAB Institutes Unified Patents IPR Petition Despite Patent Owner’s RPI and General Plastic Challenges
PTAB Institutes Unified Patents IPR Petition Despire Patent Owner’s RPI and General Plastic Challenges:
On December 20, 2018, the Patent Trial and Appeal Board (PTAB) instituted Unified Patents’ petition for Inter Partes Review (IPR) of Patent No. 9,253,239, assigned to Bradium Technologies LLC. Bradium asserted that was deficient for failure to name all real parties-in-interest (RPIs) and also urged the PTAB to use its discretion to deny institution. The PTAB requested additional briefing regarding the RPI issued and, after considering the evidence, instituted review.
An IPR Petitioner must identify “each real party-in-interest for the party.” 37 CFR 42.8(b)The Petitioner is barred from filing an IPR if the IPR is filed “more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement.” 35 U.S.C. § 315(b).
Unified Patents’ business model is to file IPRs for the benefit the “technology zones” of its members. The PTAB found that this relationship does not make Unified’s members RPIs. Unified v. Bradium, IPR2018-00952, Paper 31 at 9.
This is the third time that the PTAB has found that Unified’s members are not RPIs following the Federal Circuit decision in AIT v. RPX, 897 F.3d 1336 (Fed. Cir. 2018). Unified v. Bradium, IPR2018-00952, Paper 31 at 5 (Institution Decision). In AIT, the Federal Circuit held that the PTAB’s RPI analysis, which almost exclusively focused on whether the non-party had control or the potential to control the IPR, was “unduly restrictive.” AIT, 897 F.3d at 1351. The Federal Circuit found that the PTAB should also have also considered “whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” Unified v. Bradium, IPR2018-00952, Paper 31 at 4, quoting AIT, 897 F.3d at 1351. The PTAB distinguished Unified’s activities from those of RPX, emphasizing that (1) Salesforce, the alleged RPI in the AIT case, “made a payment to RPX shortly before filing the IPR,” (2) Salesforce “discussed the patent and related litigation with RPX and a shared board member,” (3) RPX “negotiated a license on behalf of Salesforce,” and (4) “more importantly,” Salesforce “was time barred from filing its own IPR.” Unified v. Bradium, IPR2018-00952, Paper 31 at 10. In contrast, there is no evidence that Unified communicated with its members regarding the IPR or the litigations involving the ‘239 patent, there is no evidence that Unified and its members share officers or board members, and “most significantly,” there is no evidence that any of Unified’s members were time-barred from filing an IPR. Unified v. Bradium, IPR2018-00952, Paper 31 at 11.
The Board has consistently found that Unified Patents’ members are not RPIs and need not be listed on Unified’s IPR petitions. The Federal Circuit has not yet decided this issue.
Discretion Under 35 U.S.C. § 314(a)
If a previous IPR petition has been filed, the PTAB has discretion whether to institute a subsequent petition filed against the same claims of the same patent. The PTAB considers the following non-exhaustive Gen. Plastic factors when determining whether to institute the subsequent petition:
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
- whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
- the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
- whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
- the finite resources of the Board; and
- the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.
Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential).
In the Unified v. Bradium proceeding, two judges of the PTAB panel decided to institute the IPR, while a third judge dissented, arguing that the PTAB should have used their discretion to deny institution. The main differences between the analysis of the majority and that of the dissent was with respect to Factor 1 (whether the same petitioner previously filed a petition) and Factor 3 (whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition).
With respect to Factor 1, both the majority and the dissent agreed that the fact that a new petitioner has challenged the ‘239 patent weighs against denying institution. However, the majority found that the fact that a new Petitioner has challenged the petition weighs “overwhelmingly against a discretionary denial in this proceeding,” and that the “majority does not, under our discretion, impute the actions of an unrelated petitioner on this petitioner.” See Unified v. Bradium, IPR2018-00952, Paper 31 at 20. The dissent found that the fact that there is a new petitioner merely “weighs against [exercising] our discretion to deny institution,” but did not find this factor to be “overwhelming.” See Unified v. Bradium, IPR2018-00952, Paper 31 at 46.
With respect to Factor 3, the majority found the fact that the new petitioner had access to both the preliminary response from the previous IPR and the decision whether to institute weighs against institution. Unified v. Bradium, IPR2018-00952, Paper 31 at 21. The dissent found that the timing of Unified’s filing “raises the potential for abuse” and that “petitioner indeed took advantage of ‘the opportunity to strategically stage their prior art and arguments.” Unified v. Bradium, IPR2018-00952, Paper 31 at 47-48.
Because the decision is highly discretionary, PTAB panels have reached inconsistent conclusions regarding whether a subsequent petition filed by a new petitioner should be instituted when the new petitioner is aware of the preliminary response and/or decision whether to institute. Companies considering whether to file an IPR petition when another company has already filed a petition should be aware that their petition could be denied.
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the protection and enforcement of designs and a wide range of electrical and mechanical technologies, including analytical/measurement systems, medical devices, HVAC systems, printers/copiers, telecommunications systems, data recording mediums, semiconductor fabrication, bearings, welding processes, sports equipment, footwear, and various automobile components, such as tires, transmissions, engines, fuel-injection systems, motors, lamps, steering systems, connectors/wiring, valves, and control/monitoring systems.
See his full biography here.