Computer Claim Disarray: Untangling the Means-Plus-Function Doctrine to Eliminate Impermissible Functional Claiming in Software Patents

0417-0448_EDLIN_081313 (DO NOT DELETE) 9/11/2013 1:44 PM COMPUTER CLAIM DISARRAY: UNTANGLING THE MEANS-PLUS-FUNCTION DOCTRINE TO ELIMINATE IMPERMISSIBLE FUNCTIONAL CLAIMING IN SOFTWARE PATENTS Elise S. Edlin† In order for a property system to function successfully, it must clearly establish the rights held by the property owners.1 In real property, this is the concept of marking the boundaries of a property with a fence. It is efficient because public notice about the extent of ownership rights allows others to avoid trespassing and negotiate permissioned use.2 In intellectual property, these boundaries are far more difficult to discern, as the patentee must mark his boundaries through the words of a patent’s claims.3 These words can mean different things to different people at different times. As it is in real property, the notice function of patents is intended to promote innovation by providing both the public and the patentee with detailed information about what the patentee owns. This allows others the freedom to operate without fear of infringing vague patents, which lowers investment costs and spurs innovation.4 To this extent, “[n]otice information is a public good,”5 and to serve this purpose, the scope of the invention must be clearly delineated by the language of the claims. Clarity of scope, however, is rarely a priority for inventors, who may benefit from keeping the public in the dark about the true scope of their © 2013 Elise S. Edlin. † J.D. Candidate, 2013, University of California, Berkeley School of Law. 1. See JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK 46 (2008). 2. Id. 3. Id. 4. See Peter S. Menell and Michael Meurer, Notice Failure and Notice Externalities, J. LEGAL ANALYSIS 9–11 (Jan 3, 2013), available at http://jla.oxfordjournals.org/content/ early/2013/01/03/jla.las019.full.pdf+html (“In many cases of notice failure, the resource developer knows the property owner, but attempts to avoid infringement rather than bargain for permission. When the scope of the rights is ambiguous, such a strategy can prove costly.”). 5. Id. at 9. 0417-0448_EDLIN_081313 (DO NOT DELETE) 9/11/2013 1:44 PM 418 [Vol. 28:417 BERKELEY TECHNOLOGY LAW JOURNAL invention.6 The reward of ownership rights incentivizes a patentee to maximize the scope of his invention, pushing the boundary line outward in order to encapsulate more subject matter and exclusive rights than would actually correspond to the invention. Troublingly, the patentee may get away with this as the Patent Office often devotes little “effort to clarifying patent boundaries in the examination process” and focuses merely on determining whether a claimed invention is novel or nonobvious over the prior art.7 Thus, the precise scope of a patentee’s invention is often left for federal district court judges to determine ex post during claim construction.8 Because language is uncertain and open to multiple interpretations, both the patentee and the public remain uncertain about the precise scope of the invention until litigation.9 This uncertainty harms innovation by imposing external costs on third parties to determine the scope of claims10 and dampens economic growth.11 Highlighting this issue, the Supreme Court declared, “ ‘the limits of a patent must be known’ . . . . Otherwise, a ‘zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field’ . . . .”12 The scope of a patentee’s invention is even more uncertain in the context of means-plus-function claims, as this type of claim allows a patentee to claim a function, provided that they sufficiently describe the corresponding 6. See id. (noting that “some resource claimants may prefer to obscure the existence, scope, or ownership of their property rights”). 7. J. Jonas Anderson & Peter S. Menell, From de Novo Review to Informal Deference: An Historical, Empirical, And Normative Analysis of the Standard of Appellate Review for Patent Claim Construction 5 (UC Berkeley Public Law Research Paper No. 2150360, 2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2150360. 8. See id. 9. See Mark Lemley, Software Patents and the Return of Functional Claiming, 2013 WIS. L. REV. (forthcoming 2013) (manuscript at 25), available at http://papers.ssrn.com/sol3/papers. cfm?abstract_id=2117302 (“And because the Federal Circuit reverses as many as 40% of claim constructions, the parties really can’t know what a software patent covers until the Federal Circuit has addressed the issue.”) (citations omitted). 10. See Harry Surden, Efficient Uncertainty in Patent Interpretation, 68 WASH. & LEE L. REV. 1737, 1752 (2011) (“This increases the information transaction costs for a firm of estimating and assessing infringement liability risk. It also raises the cost of proactively reducing risk by reorienting production activities, or attempting to ‘invent around’ a particular claim by creating products that do not infringe.”) (citing BESSEN & MEURER, supra note 1, at 147). 11. Id. at 1755 (citing Tamar Frankel, The Legal Infrastructure of Markets: The Role of Contract and Property Law, 73 B.U. L. REV. 389, 395–97 (1993)). 12. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996) (quoting Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938) and United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942)). 0417-0448_EDLIN_081313 (DO NOT DELETE) 2013] 9/11/2013 1:44 PM FUNCTIONAL CLAIMING IN SOFTWARE PATENTS 419 structure in the patent’s specification.13 The scope of the ownership rights obtained through means-plus-function claims is defined by the structure disclosed in the specification, along with equivalents,14 which can be difficult to discern.15 Furthermore, in order to broaden the scope of their invention, some patentees try to use means-plus-function claiming to obtain ownership rights to an entire function; they hope to obtain rights over every way of performing the claimed function.16 To this extent, patentees attempt to broaden the scope of the corresponding structure, often to the point that what they are asserting as structure is merely a restatement of the claimed function.17 Because a definitive identification of the corresponding structure occurs during claim construction,18 the precise scope of the patentee’s invention is unknown until decided by a court—at which point many of these claims may be deemed invalid as overly broad.19 The Federal Circuit has devised a procedure for the district courts to follow in construing the 13. 35 U.S.C. § 112(f) (2006). 14. Id. 15. See Peter S. Menell, Promoting Claim Clarity, Solutions to the Software Patent Problem 1 (UC Berkeley Public Law Research Paper No. 2171287, 2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2171287 (“[T]he PTO issues a great many (...truncated)