Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as means-plus-function under pre-AIA 35 U.S.C. §112 ¶ 6
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Functional claim language which defines an invention by
what it does rather than what it is can be a powerful claim
drafting tool when used carefully. For example, functional language
may be advantageous for computer-implemented inventions that are
characterized with reference to logical components instead of
physical hardware. 35 U.S.C. § 112(f) (formerly §
112¶ 6) expressly permits the use of functional claiming and
is traditionally invoked by the phrase means for
followed by a functional modifier. But even when the term means is not used, other terms that are not understood
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Thursday, March 11, 2021
In determining whether a claim element invoked 35 USC § 112, ¶ 6, the US Court of Appeals for the Federal Circuit concluded that “module” was a nonce term and required sufficient corresponding structure in the patent specification to avoid indefiniteness under 35 USC § 112, ¶ 2.
Rain Computing, Inc. v. Samsung Electronics Co., Ltd., Case Nos. 20-1646, -1656 (Fed. Cir. Mar. 2, 2021) (Moore, J.)
Rain sued Samsung for infringement of a patent directed to a method for delivering software application packages to user terminals over a network. The claims at issue included an element that recited a “
user identification module configured to control access [to] software application packages.” The district court determined that the “user identification module” was a means-plus-function term subject to 35 USC § 112, ¶ 6, but that the specification disclosed sufficient corresponding structure such that the term was not indefinite. Rain