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Monthly Archives: July 2015

Federal Circuit Broadens Application of 35 USC 112(f)

By Stephen B. Schott

Federal-Circuit-cafcUS courts interpret patent claims written in a specific way under a special claim interpretation statute. Claims written in this way include “means plus function” elements that courts interpret under 35 USC 112(f) (often referred to as 35 USC 112(6)).

Most patent practitioners in the US avoid means plus function style claims but they are common in other parts of the world, particularly Europe, and thus sometimes make it into US applications that originate overseas. Further, means plus function claims can be found when a court reads a claim as not explicitly invoking the means plus function statute.

A recent Federal Circuit en banc case shed some light on identifying means plus function cases.

Interpreting Means Plus Function Claims

The statute that governs means plus function claim interpretation reads as follows:

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.

Such a claim element might read like this:

“release means for retaining the guide in the charged position.”

A court interpreting such a claim follows 35 USC 112(f) above and first identifies the claimed function and then looks to the patent specification for the structure that performs this function. From the patent owner’s perspective, this method of claim interpretation is potentially problematic for two reasons: (1) If the specification fails to show a corresponding structure, a court will consider that the means plus function term is indefinite and the claim is invalid, or (2) The structure in the specification often provides a narrower interpretation of a claim element than the patent owner would want.

Thus in the US, many patent drafters try to avoid means plus function claims. Dennis Crouch at Patently O has charted an ongoing decline in the number of claims that use means plus function language (and interestingly the number of patents using language that is functional but lacks the magic “means” word has increased.)

Unclear Claims May Be Interpreted as Means Plus Function Claims

The Federal Circuit’s en banc Richard A. Williamson v. Citrix Online, LLC opinion may make it a little more challenging to avoid interpretation under the means plus function statute.

In the claim at issue, the element that the Federal Circuit scrutinized to determine if it was written in means plus form was this:

a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

If the claim had been written as a “distributed learning control means for receiving…” its interpretation as a means plus function would be clear. But because the claim used the word “module,” the issue arose as to whether the court should apply 35 USC 112(f).

dreamstime_xs_2123998The court reviewed its precedent and in particular, a line of cases that held that where a claim does not use “means,” there is a “strong” presumption that 35 USC 112(f) does not apply. It rejected this “strong” presumption and adopted a slightly broader view of when 35 USC 112(f) applies:

The 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. Greenberg, 91 F.3d at 1583. 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.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

The court found that the limitation was subject to interpretation as a means-plus-function limitation. As noted above, these means-plus-function limitations require disclosure in the patent specification of adequate “corresponding structure” to perform the claimed function. The court found that the specification failed to disclose this structure and held the patent invalid.

The takeaway is that if a claim drafter wants to avoid the means plus function claim interpretation rules, they should draft claims that steer further from any linguistic construction that is similar to the traditional means plus function language.

If you have questions, contact me.

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Practical Topic: Systems of Personal Organization

By Stephen B. Schott

dreamstime_s_16832059You know when you have a thread hanging from a sweater. You give it a tug hoping it will snap off. But it doesn’t. So you pull a little more. Then a little more.  It will snap…it will snap… and you keep pulling…but deep down you know this sweater disassembly cannot be good. Before long your persistence at pulling the thread results in a ruined sweater.

This thread pulling, according to David Allen, the author of the best-selling book Getting Things Done, happens in your mind, too. It’s like this: Have you ever gone through your mental to-do list, just picking at one item in your mind? That thing you haven’t done leads to thinking of another, and another, and another—and before long you are undone with anxiety over not only the things you remember, but all the other things you know you’re forgetting.

Take it a step further. I graduated from school more than 20 years ago. But still, a few times a year, I have the dream that I’m showing up for class and there’s a test that I somehow forgot about. I never wrote down the test date, never studied. It’s a terrible feeling and I wake up a bundle of nerves. More than two decades after my last class, this nightmare still holds power over me, and it’s a shared, recurrent nightmare among people who attended school. The nightmare of the forgotten task.

In some way, everyone relates to one or both of these stories. It’s part of our shared human anxiety. An anthropologist might link it back to an evolution where Caveman Ug forgets to bring his spear while out picking berries and gets attacked by a hungry lion. Anxious thread-pulling Ugs lived. Carefree non-thread-pulling Ugs died. And that’s why we’re a mess. Whatever the evolutionary basis, this problem of the “to-do list anxiety” is one we share.

The problem with To-Do List Anxiety, however, is that it no longer keeps us alive. In a modern world, it leaves us neurotic and anxious. Given its long history, you might think that humanity’s best minds have come up with a way to address To-Do List Anxiety, right?

Looking at some of our earliest written forms of moral code and psychological guidance, I cannot find any guidance on this topic in the Christian Bible, Jewish Torah, Muslim Koran, or an admittedly limited reading of Hindu texts. Buddhism most clearly articulates what the others mention about finding peace of mind and spirit. In Buddhism, a practitioner finds peace of mind through quiet meditation. The other religions offer versions of meditation in prayer and ritual. Which is all completely excellent…but as I sit on my meditation mat in the morning, the emails are piling up, my voicemail overflows, and my meditative peace is only a calm between an assault of things to do.

dreamstime_xs_50654310As someone seeking to maintain some semblance of that spiritual calm in the face of this to-do list assault, I have made a long study of personal organization systems. It’s kind of an obsession. In this study, I’ve read books, watched videos, attended seminars, and observed other people’s systems. Oh yes. I know your system. You probably fall into one of the following categories.

TYPICAL ORGANIZATIONAL SYSTEMS (NOT RECOMMENDED)

  1. The bound journal person. You carry a bound journal and you know it gives a level of confidence to the people around you. In a meeting, other people see you with the journal and think, “Ah, that fellow inspires great confidence. He’s organized. He will get things done.” But here’s my further observation: In my life, I have never once seen you refer back to one of these bound journals beyond a day later than the meeting. Seriously: How practical is it to go through your journal trying to find a single page from 8 months ago? And what way is it to organize your to-do lists? If you fill one of these books (something I’ve rarely seen), will you carry volumes of journals with you everywhere for future reference?

Style: 7
Effectiveness: 3
Recommended for: Captain of an ocean-going ship

  1. The post-it person. If you’re at wodreamstime_xs_47922230rk, look to your right. Look to your left. There are people all around who, just like you, are using post-it notes to keep track of tasks. And the notes end up stuck to your computer monitor looking like a seashell picture frame of neurosis. The notes also end up on handbags, doors, steering wheels, bathroom mirrors. All over. Take a long look at the computer monitor and ask yourself: Do you ever take down the notes? Can those notes travel with you? What focus can you maintain when all around you are notes shouting, “Pick-up dinner,” “Dentist appointment at 9am,” and “Call mom about yoga.”

Style: 0
Effectiveness: 6
Recommended for: Owners of 3M stock

  1. The get organized app of the day person. I love you. I relate to you. When it comes to self-improvement apps, I am a model of self-experimentation so I relate to you trying the new “Get organized” app du jour. But your phone is constantly beeping and reminding you of things. You carry this app everywhere. But. Yes there’s a but. It hurts but you know this is true. One week later. Maybe 3 days later, your app sits on your phone unused. It’s still reminding you of all the things you’re not doing. But those things were due 3 weeks ago. Every phone buzz is a reminder that you are a complete organizational failure.

Style: 4
Effectiveness: 6
Recommended for: Teenagers who love video games

  1. The “I keep it all in my head” person. You have a mind like a steel trap. You sort it cleanly and neatly in your head and systematically prioritize everything and get it done on time. You are age 5 or under.  Your “To-Do” Anxiety is limited to: (1) Need food, (2) need fun, and (3) need sleep.

Style: 10
Effectiveness: 10
Recommended for: 4 year olds and supernatural beings

IMPROVED ORGANIZATIONAL SYSTEMS (RECOMMENDED)

After studying and reading over 20 years, I can recommend only two systems, and I use a hybrid of them. It’s better if you check them out and decide which one works better for you.

System One: The Franklin Planner and Seven Habits of Highly Effective People

51toHpibB3L._SX258_BO1,204,203,200_Stephen R. Covey wrote one of the best-selling books of all time: The Seven Habits of Highly Effective People. For a long time, the title turned me off. It sounded like a study of rich business owners. But it’s not. It’s an effective manual for how to lead a purpose-driven life. He presents a system that helps a person define their own personal mission and beliefs in a Personal Mission Statement, and then helps people identify and achieve goals that follow their personal mission.

Covey’s 7 habits essential for living a principled and fulfilling life are the following:

Independent habits

  1. Be proactive.
  2. Begin with the end in mind. Focus on your goals and work towards them.
  3. Put first things first.

Interdependent habits

  1. Think win-win. This is all about finding ways to work with others that benefit both sides.
  2. Seek first to understand, then be understood. Use your empathy and listen.
  3. Synergize. Find the strengths of those around you and create teams that can achieve remarkable success.

Continuous improvements

  1. Sharpen the saw. Balance and renew your energy and mind.

In conjunction with the book, Covey created a tool: The Franklin Planner, named for Benjamin Franklin, one of the originators of self-improvement and time management in the Covey style. From 1996 until about a year ago, I faithfully carried a Franklin Planner. It’s a daily planner but with sections organized to help implement the seven habits, and to use it properly requires a little training. It’s 100 times better than the plain bound journal.

Bottom line. Covey’s system is for someone who wants to control more than their “to-do” list and is willing to embark on a mission to make their life more meaningful. Done right, his method not only helps you get things done but also helps you live a more fulfilled life. The downside is its lack of technology incorporation. In an era of endless technology, carrying around a planner can seem a little old-fashioned. That said, it’s not as distracting in meetings and there’s something rewarding about using pen and paper.

System Two: Getting Things Done (GTD)

GTDCover4About 5 years ago, I finally read Getting Things Done by David Allen. I was entrenched in the Franklin/Covey system at the time and skeptical about an entire book dedicated to just dealing with your list of “to-do” items. My skeptical and Franklin Covey cult-trained mind asked, “How will this align with my core principles?” At the same time, I was getting 140 emails for work daily and my “to-do” list always seemed like an impossible-to-scale mountain.

To climb the insurmountable To-Do list mountain, the initial step in the GTD system is the one that resonates with most people. The very first thing you are supposed to do is set aside some time and find a quiet place with sheets of blank paper and a pen. Then…data dump all of your tasks onto the papers. Write down everything you can think of that you have to and want to do. All the things you’re waiting for from others. Long-term tasks. Short-term tasks. Allen provides many prompts to help you get it all out. Just write and write and write until you can’t think of another thing you need to do that is not on that list.

Pause for a moment in this article and imagine that. Imagine you’ve just written out everything you currently need to do. There’s a record of it. You don’t have to wonder about all the things you’re overlooking. It’s captured somewhere. Does that sound appealing? Does peace of mind spring forth from easing up on the worried windmills of your mind? I’ll bet it does.

The remainder of the GTD system is a workflow for organizing and processing this list and additions to it. The GTD system fits in well with many software systems (like Outlook and Gmail), and has a superb and free implementation in Evernote (so it’s on your phone, laptop, and cloud) called The Secret Weapon.

Bottom line. The GTD system is great but incredibly complicated to implement. The Secret Weapon simplifies GTD and provides a technology that puts it to its best use.

WHAT DO I DO?

I use The Secret Weapon’s implementation of GTD within Evernote in conjunction with The Seven Habits to drive my priorities. In meetings, I carry a Livescribe notebook and use their proprietary pen to take notes, which then automatically transfer into Evernote. I do this to avoid looking at a screen while talking to people. My system is not for everyone but one, both, or your own combination of these tools and systems will help you feel more organized and fulfilled. Whatever you do, stop pulling threads.

If you have questions, contact me.

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