Pulling on the Threads of “Functional” Claiming Jurisprudence

Michael S. Garrabrants, Novak Druce & Quigg LLP

Abstract

In the world we inhabit, no significant difference would be attributed to a “detector of a signal” versus a “means for detecting a signal” or to a “generator of a configuration” versus a “configuration generator“. However, in patent claim construction, the differences can be profound. The first approach in each case allows a broadly-enforceable construction, while the latter results in a cramped claim construction that may not properly reward a patentee for his inventive contribution, and result in a finding of claim indefiniteness under § 112 ¶ 2. The latter result is from application of the combination of § 112 ¶6 and ¶2, which is not the correct tool for culling the chaff of invalid patents from the rest. In fact, the knee-jerk opposition to “functional” claims advances precisely the wrong policy objectives, by punishing those who have contributed new broadly applicable principles and relationships in favor of rewarding those who would simply implement such principles. Further, functional claiming jurisprudence increasingly forces patentees to either to accept a means-for construction or admit prior art status of the limitation at issue. A better approach is to dispense with the notion that “functional claiming” is strictly prohibited, and return to the basic questions of enablement, written description, novelty and non-obviousness.