In a recent case before the Federal Circuit (on appeal from a PTAB IPR), Playboy and others attacked Skky Inc.'s patent on transferring A/V files to a wireless device. While you may wonder how claims on something so broad can be valid, the patent traced its way back to applications filed in 2001 and included some additional details. During prosecution, the Examiner had been rejecting the claim based on a combination of a few references, but eventually allowed it due to the addition of the bold means element. Claim 1 recites:
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:
compressing said one or more digital audio and/or visual files, wherein said audio and/or visual files comprise one or more full or partial master recordings of songs, musical scores or musical compositions, videos or video segments, movies or movie segments, film or flu segments, one or more image clips, television shows, human voice, personal recordings, cartoons, film animation, audio and/or visual advertising content and combinations thereof, and wherein said compressing comprises normalizing,
sampling and compressing said digital audio and/or visual files; storing compressed audio and/or visual files in one or more storage mediums; and
transmitting to said wireless device means said compressed audio and/or visual files wirelessly over the air, with or without an Internet network
While there are a lot of words there, the claims are still quite broad. An issue in the appeal was the bold term of "wireless device means." Normally there is a presumption that such a term would be interpreted narrowly as a "means plus function" limitation (especially here where the Examiner confirmed it was treated as a means plus function element during prosecution). However, the Court found the presumption overcome for two main reasons. First, the means recites no function and simply sets forth a certain type of device. Second, the "wireless device" term itself denotes structure. I.e., a wireless device does not mean "a device for performing a wireless function" but rather a device having certain structure. While these points are certainly debatable, what is clear is that the element was not written as "a device for wirelessly transmitting" and thus in this case should not be treated as a narrow means plus function element.
The result of the Court's interpretation of course resulted in the patent being found invalid since the claim scope of the "wireless device" term was broad enough (under the USPTO's Broadest Reasonable Interpretation standard) to encompass the prior art.
The impacts of this case on prosecution are many.
As one example, the case lends support to prosecutors aiming to restrict the Examiner's ability to interpret claim elements as means plus function elements. By drafting or amending structural element claims to avoid explicitly reciting a function (particularly by avoiding 'ing' terms), the chance that those terms will be improperly interpreted as means plus function terms is reduced.
A more nuanced issue is when a claim term is being rejected under Section 112 because it is a means plus function element but specification does not describe any other structure. This can occur when prosecuting claims originally drafted in the European style that are later filed in the US. Here, the rejection can be difficult to overcome and even fatal in some instances. Based on this case, one option might be to amend the claim to delete the functional aspect and then, even if the "means" language is still present, cite this case and point out that now only structure is claimed so that even if the specification has no further details the rejection should be overcome.