Personalized Media Communications, L.L.C. v. International Trade Commission
United States Court of Appeals for the Federal Circuit (Fed. Cir).

Decided November 24, 1998

BACKGROUND
You are confronted with a series of claims from a patent issued to a competitor for a device that use the terms "means for this" and "means for that." In your operations, you use a device that is similar to the device depicted in the drawings of the patent. You think to yourself that if "means" is a broad term, then you could be infringing the patent. However, if "means" is limited to what is depicted in the drawings of the patent, then you feel confident that you do not infringe the patent. What does "means" mean in patent claims?

EXECUTIVE SUMMARY
In this case the United States International Trade Commission (USITC) was faced with the task of determining whether certain Digital Satellite Systems being imported into the United States infringed the claims of a United States patent under 19 U.S.C. section 1337. The language "digital detector" for performing a recited function was found by the USITC to be "a functional phrase, not limited to particular structure," was means-plus-function language, and thus subject to 35 U.S.C. section 112, sixth paragraph, despite not reciting "means." The USITC then looked to the specification to determine what structure or structures corresponded to a digital detector and found none. Without a corresponding structure, the USITC found that the claims were invalid for indefiniteness. The Fed. Cir. disagreed, finding that the disputed language was not in a means- plus-function format because "detector" is a sufficient recitation of structure. The Practice Pointer to be gained from this case is that even if "means" is not recited, claims may none-the- less be subject to 35 U.S.C. section 112, sixth paragraph. Thus, a patent drafter may wish to consider making the patent record clear regarding the intent to invoke, or not invoke, that statute.

THE LAW
Means-plus-function claim language is permitted under 35 U.S.C. section 112, sixth paragraph, which states that:

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.

Simplified, this statute provides that under certain circumstances, a claim can recite a function without indicating the structure, material or act that performs that function. This type of claim covers the structures, materials or acts (and equivalents) set forth in the patent that correspond to that function. As such, claim elements that recite means-plus-function language do not encompass all "means" to perform a recited function and may not be as broad as the plain language may convey to the reader. Means-plus-function claim language is traditionally used by a claims drafter using the "means for [performing a function]" format. The use of this language triggers a presumption that the claim falls under 35 U.S.C. section 112, sixth paragraph, whereas the lack of such language triggers the opposite presumption. These presumptions can be rebutted with evidence intrinsic or extrinsic to the patent record that a term or phrase connotes structure or function.

IMPORTANCE OF THE CASE
This case provides additional guidance as to what claim language can be interpreted as a "means-plus-function" under 35 U.S.C. section 112, sixth paragraph. This statute has been the subject of extensive litigation over the past few years.