By Tyson B. Benson, Associate
In a recent decision from the District of Delaware, the Court held that the term “controller” did not invoke pre-AIA 35 U.S.C. § 112(6). The specific claim element recited:
an aging controller that monitors a measurable characteristic of said memory and deletes ones of said multiple versions of said ones of said data records in response to said time stamp and said measurable characteristic thereby to increase a capacity of said memory.
The defendant’s proposed claim construction was that the “aging controller” invoked means-plus-function interpretation and, as a result, the claim was indefinite for failing to adequately disclose a corresponding structure in the specification. More specifically, the defendant argued that “controller” was a nonce word and “that a person of ordinary skill in the art would recognize a ‘controller’ by its function.” In other words, if the defendant was able to obtain the desired claim construction, the corresponding claim may have been invalidated as failing to adequately disclose a corresponding structure within the specification.
The Court started with the presumption that the term did not invoke pre-AIA 35 U.S.C. § 112(6) because the term did not include the term “means.” Thus, the defendant bore the responsibility of overcoming the presumption. The defendant relied on the dictionary definition of “controller,” which was “something that controls something else.”
However, the Court looked to the specification, which included a definition of “controller.” The pertinent portion of the specification stated:
Those skilled in the art should be familiar with the use of controllers in processing environments generally and, more specifically, with main memory databases. Controllers may be implemented in software, firmware, hardware, or some suitable combination of at least two of the three.
Based upon this passage, the Court did not find that “controller” is “anything that controls.” Instead, “controller” was within a class of structures that could be implemented in hardware, software, firmware, or combinations thereof. Based upon this reasoning, the Court held that the defendant failed to overcome the presumption. Therefore, the term “controller” was not deemed a functional term, and the Court did not have to decide whether the specification included sufficient corresponding structure for definiteness purposes.
One important takeaway is to include an adequately described corresponding structure for any element that may be deemed to invoke means-plus-function interpretation. These types of claim construction arguments and examination at the Patent Office have increased post-Williamson v. Citrix. If one does not describe an adequate corresponding structure, the claim can be invalidated (or rejected if still pending) under pre-AIA 35 U.S.C. § 112(2) (post-AIA 35 U.S.C. § 112(b)). If there is an adequately described corresponding structure within the specification, the applicant and/or patent owner can sleep well knowing their claim elements are properly supported and, therefore, will survive if interpreted as a means-plus-function element.