Means-Plus-Function Claiming Requires Both “means” and “function”

A proper invocation of §112 ¶ 6 means-plus-function claiming requires that the claim recite the functionality of the purported “means,” and not just structure, the Federal Circuit decided in Skky. ¹ Despite the presumption triggered by the word “means” in the claim term “wireless device means” and the Examiner’s understanding of the claim term as invoking §112 ¶ 6, the Court found that, because the full claim term recites structure and not function, it does not invoke §112 ¶ 6. ²The Court found that the claims did not recite any functions for the claimed “wireless device means” to perform, and that the term “wireless device” is commonly used to designate structure. ³

The Court took the case on appeal from the PTAB, which found the claims to be unpatentable as obvious in an inter partes review proceeding. During the IPR, the PTAB found that the claims did not invoke §112 ¶ 6, and, under that construction, found the claims to be obvious in view of prior art. ⁴ The Court affirmed.

During prosecution, Skky amended the claims to include the term “wireless device means.” The Examiner interpreted the claim term to invoke §112 ¶6, and, based on this claim construction, found that the claims were not obvious in view of the cited prior art. Representative allowed independent claim 1 reads:

1. A method of wirelessly delivering over the air one or more digital audio and/or visual files from one or more servers to one or more wireless device means comprising:
. . . and
transmitting to said wireless device means said compressed audio and/or visual files wirelessly over the air, with or without an Internet network.

The Court, looking to the Williamson⁵ and TecSec⁶ cases for guidance in determining whether the language of the claim invokes §112 ¶ 6, took a different view. The Court noted that the test for invoking §112 ¶ 6 is more than the simple presence or absence of the word means. ⁷ “The essential inquiry is not merely the presence or absence of the word ‘means’ but 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.”⁸ Further, a claim term can be determined to recite sufficient structure so as not to invoke §112 ¶ 6, if “the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure.” ⁹

The Court noted that the claim term couples the word “means” with the term “wireless device,” which is commonly understood to denote structure and not function. The Court further found that the claims do not recite any functions for the wireless device means to perform. Accordingly, the Court reasoned that the claim does not properly invoke §112 ¶ 6. ¹⁰ Based on this alternative construction, the Court found the claims to be obvious in view of the same prior art that the Examiner had allowed them over.

In this case, an alternative claim construction of a putative means-plus-function claim led to the reversal of the Examiner’s non-obviousness finding, using identical prior art. Patent practitioners should take care to draft claims that unambiguously invoke §112 ¶ 6, if that is their intention.