Means-plus-function (“MPF”) is a type of patent claim involved in many important decisions in U.S. patent law. A fundamental patent-law concept – that abstract concepts are not patentable – comes from O’Reilly v. Morse, 56 U.S. 62 (1853), a case involving an MPF claim. The Morse in that case was Samuel Morse and the technology was the telegraph.
MPF allows an inventor to claim a means for doing something without reciting the thing (“structure” in patent terminology) that accomplishes the action. For example, “a means for transporting” could include cars, trucks, boats, airplanes, pack animals, conveyor belts, bike messengers, etc. An MPF claim allows an inventor to avoid enumerating all possible means while covering all “equivalents” of whatever is disclosed in the specification. Covering equivalents can be important in technology patents where technology is rapidly changing and a specific means may evolve during the life of the patent.
However, MPF claims can be construed narrowly and may be found invalid for indefiniteness if the patent specification does not disclose a “corresponding structure, material, or acts” for “performing the specified function”. 35 U.S.C. § 112(b) and (f). In the example above, if the specification discloses only “a boat” the claim will cover only “a boat” and its equivalents. If the specification does not disclose any “means for transporting” the claim will be found invalid.
MPF claim considered invalid in precedent-setting case due to indefiniteness
The Federal Circuit recently affirmed the invalidity of an MPF claim in Advanced Ground Information Systems, Inc. v. Life360, Inc., Case No. 2015-1732 (Fed. Cir. July 27, 2016)(“Life360”), a case where Eric Christu and I were part of the trial team. Life360 involved patents covering “a cellular communication system that allows multiple cellular phone users to monitor others’ locations and statuses via visual display of such information on a map.” Id. at p. 3.
Life360 is the creator of a smartphone app that “allow[s users] to view family members on a map, communicate with them, and receive alerts”. Id. at p. 5. Advanced Ground Information Systems (“AGIS”) sued Life360 alleging Life360’s smartphone app infringed AGIS’ patents.
The term ‘symbol generator’ is at the center of the Federal Circuit’s precedential decision. The ‘symbol generator’ displayed information about others on a user’s smartphone screen. The District Court held that ‘symbol generator’ was a MPF claim that was invalid for indefiniteness.
On appeal, the Federal Circuit found the term ‘symbol generator’ is an MPF claim. Despite not using the words “a means for”, the Court held that “because it fails to describe a sufficient structure and otherwise recites abstract elements ‘for’ causing actions…or elements ‘that can’ perform functions” ‘symbol generator’ is an MPF claim. Life360 at p. 9. The Court found that “the term ‘symbol generator’ is a term coined for the purposes of the patents-in-suit…[it] is not used in ‘common parlance or by persons of skill in the pertinent art…’ such that it connotes sufficient structure…” Id. at p. 10.
Next, the Court found that the patents-in-suit were invalid for indefiniteness because they did “not disclose an operative algorithm for the claim elements reciting ‘symbol generator.’” Life360 at p. 13. The Court found this was analogous to claiming a means for performing a specific function and subsequently disclosing a general purpose computer as the structure for performing that function. Id. Because, the Court found, the specification did not disclose sufficient structure for the ‘symbol generator’, the patents-in-suit were held invalid. Id.
A word of caution when using MPF claims
Inventors and patentees must exercise caution when using MPF claims. Coining a term or phrase to use in an MPF claim can result in patent invalidity if the specification does not adequately disclose and explain what is meant by the newly-coined term or phrase. If using an MPF claim in a technology or computing patent, make sure structure including, possibly, an algorithm, is recited in the specification; a ‘general purpose computer’ will not be sufficient.
Search Blog
Follow Us
Recent Posts
- Federal Court Strikes Down the DOL’s Increased Salary Thresholds for Executive, Administrative, Professional, And Highly Compensated Employee Overtime Exemptions
- Breaking News: FinCEN Postpones Beneficial Ownership Reporting Deadlines for Companies Impacted by Recent Major Storms
- What You Need to Know About the U.S. Department of Transportation’s Build America TIFIA Loan
- Breaking News: Federal Judge Blocks Nationwide Implementation of the FTC’s New Rule Banning Noncompete Agreements
- September 4th is Almost Here: How Employers Can Prepare for the Upcoming Effective Date of the FTC’s Non-Compete Rule
- Florida’s New Statutory Home Warranty: What Home Builders Need to Know
- Orange County Proposes Temporary Suspension Ordinance on New Development Applications
- Raising the Roof: The U.S. Department of Labor Announces Rule Raising Salary Thresholds for Overtime Exemptions
- New Guidelines Anticipated Following HHS’s Health Cybersecurity Concept Paper
- SECURE 2.0 and Protecting Your Designated Beneficiaries
Popular Categories
- Employment and Labor
- Litigation (Labor & Employment)
- Construction
- Department of Labor
- Business of Real Estate
- Landlord-Tenant
- Construction Litigation
- Salary
- Real Estate Law
- Competition
- Cybersecurity
- Intellectual Property
- Appeals
- Construction
- Contracts
- Litigation
- Public Private Partnership
- Trusts and Estates
- Data Security
- Business
- Development/Land Use
- Supreme Court
- Technology
- Privacy
- IP Litigation
- Litigation (Appellate)
- Patents
- Public Finance
- Business
- Regulatory Compliance
- Florida Government Contracts
- Foreclosures
- Trademark
- Contracting
- Health Care
- Financial Institutions
- Compliance
- Estate planning
- International Dispute Resolution
- Property Tax
- Florida Public Contracts
- Government Contracting
- Government Contracts
- Government
- Conveyances
- Lease
- Appellate Blog
- Patent Office
- Insurance
- Wealth planning
- Federal Government Contracting
- Florida Bid Protests
- Public Contracts
- Infringement
- Cyber fraud
- Proposal Writing
- Public Bidding
- GAO
- Bid Protest
- International Arbitration and Litigation
- Arbitration
- Americans with Disabilities Act
- International
- Restrictive Covenants
- Grant Writing
- Copyright
- Promissory Notes
- Title
- Small Business
- Florida Procurement
- Public procurement
- Consumer Privacy
- PTAB
- General Liability
- Technology
- International Arbitration
- Liens and encumbrances
- Liens
- Creditor's Rights
- Bidding
- Attorneys' Fees
- Inter Partes Review
- Consumer Protection
- Power Generation
- Regulation
- Venue
- Contracting
- Government Vendor
- State Government Contracts
- Ad Valorem Assessments
- Florida Administrative Law
- Attorneys' Fees
- Florida Rules of Appellate Procedure
- Bankruptcy
- Florida Public Procurement
- Russia-Related Arbitration
- Mortgages
- FINRA
- Record on Appeal
- Eviction
- Rehearing
- Loan guaranties
- Patents - Assignor Estoppel
- Statute of limitations
- Statute of repose
- Dispute Resolution
- Liens
- Maritime
- Damages
- Briefing
- Patents - Obviousness
- Request for Proposal
- Commercial Brokerage
- Trade Secrets
- Bid Writing
- Florida Bidding Strategies
- Renewal
- Attorneys' Fees
- Florida County Lands
- Florida Economic Incentive Packages
- Jury Instructions
- Stay
- Certiorari
- Design Professionals
- Forum Selection
- email hacking
- Offers of Judgment
- Prevailing Party
- Settlements
- Assignment of Contract
- Assignment of Proceeds
- Designer Liability
- Lis Pendens
- Appellate Jurisdiction - Deadlines
- Banking
- Evidence
- Evidence
- Expert
- Expert Science
- Federal Rules of Appellate Procedure
- Finality
- Fintech
- Marketing/Advertising
- Preservation
- Unlicensed Contracting
- Federal Supply Schedule
- Florida Public Records Law
- Mootness
- Socio-Economic Programs
- Sunshine Law
- Veteran Owned Business
- Homestead
- Partnerships and LLCs
- Standing
Editors
- Of Counsel
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Associate
- Partner
- Partner
- Associate
- Partner
- Partner
- Partner
- Partner
- Senior Associate
- Partner
- Associate
- Partner
- Senior Associate
- Partner
- Associate
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Partner
- Of Counsel
- Senior Associate
- Partner
- Associate
- Partner
- Partner
- Associate
- Partner
- Partner
- Partner
Archives
- November 2024
- October 2024
- September 2024
- August 2024
- June 2024
- May 2024
- February 2024
- November 2023
- August 2023
- July 2023
- June 2023
- May 2023
- April 2023
- February 2023
- January 2023
- December 2022
- November 2022
- October 2022
- September 2022
- August 2022
- July 2022
- June 2022
- May 2022
- April 2022
- March 2022
- February 2022
- January 2022
- December 2021
- October 2021
- September 2021
- August 2021
- July 2021
- June 2021
- May 2021
- April 2021
- March 2021
- February 2021
- January 2021
- December 2020
- October 2020
- September 2020
- August 2020
- July 2020
- June 2020
- May 2020
- April 2020
- March 2020
- February 2020
- January 2020
- October 2019
- August 2019
- July 2019
- May 2019
- April 2019
- March 2019
- February 2019
- January 2019
- December 2018
- November 2018
- October 2018
- September 2018
- August 2018
- July 2018
- June 2018
- May 2018
- April 2018
- March 2018
- February 2018
- January 2018
- December 2017
- November 2017
- October 2017
- September 2017
- August 2017
- July 2017
- June 2017
- May 2017
- April 2017
- March 2017
- February 2017
- January 2017
- December 2016
- November 2016
- October 2016
- September 2016
- August 2016
- July 2016
- June 2016
- May 2016
- April 2016
- March 2016