35 U.S.C. § 112, para. 6 states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Proposed draft bill states:
Functional Claim Elements— An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
Firstly, in my opinion, there seems to be not much of a difference between the earlier statue and the proposed one. So why did the need arise. I was told by someone “don’t try to mend things that are not broken”. So, obviously, the people concerned felt that some things were broken or amiss. Let’s see what that might be!!
During the initial days, there was a presumption based on the presence or absence of the word “means”. This presumption was rebuttable and could be overcome if the challenger demonstrates that the claim term fails to recite “sufficiently definite structure” or else recites “function without reciting sufficient structure” for performing that function. 112 para 6 is invoked: Simple isn’t it?
Slowly, the courts raised burden on the presumption first to a strong one and subsequently to a strong one that is not readily overcome. Lastly, to such an extent that if a claim drafter has drafted a claim so as to not intend to invoke para 6 by using the term ‘means’, the courts were unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure.
So, the skewness towards the burden for the challenger, according to me is one of the factors that led to the proposal to change 112 para 6. On an ending note as per my wisdom, Why the proposal now and not earlier?
The Williamson v. Citrix: En Banc Opinion was decided in June 2015. Why wait for 4 years to propose a change.
Well, the obvious cannot be discounted, but timely actions by the people in power can help in providing clarity at such esoteric times.