Clarity is one of the basic goals for claim drafting. The patent application is a tool to explain terms used in the claims. A response to an official action of the Patent Office revolves around the claims.
The following case is an example of a claim which was not clear. The claim language at issue was “a release means for retaining …” Baran v. Medical Device Technologies, Inc., 2010-1058 (Fed. Cir. Aug. 12, 2010). This is a term of art among patent attorneys known as a “means plus function” limitation. The limitation appears broad so as to encompass any type of means for retaining. However, Congress by statute has limited this type of claim language to encompass only the structure disclosed in the patent application and linked to the particular function recited in the means plus function limitation.
In Baran, it was unclear whether the function included only the retaining function or both the release and retaining functions. The Court held that the claim was written in a way that the function included both the release and retaining functions. This narrowed the claim as it now required the structure disclosed in the specification related to both releasing and retaining. Based on this claim construction, the defendant did not infringe the claim.
By statute, if a patentee wants to make clear that they are utilizing the means plus function claim language, the patentee must use the “means” term then insert the function after the “means” term. In this case, the patentee used the term “release” before the “means” term then followed up with the “retaining” function. Unless there is a reason for doing so, the means plus function limitation should follow the basic format of “means” followed by a function. Only one function should be identified at a time.
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