The Software IP Report
PTAB Finds Means-Plus Function Indefiniteness
By Charles Bieneman
Categories: 35 U.S.C. § 112, Covered Business Method Patent Review, The Software IP Report
Following Williamson v. Citrix Online, LLC, the Patent Trial and Appeal Board has held means-plus-function patent claims indefinite under 35 U.S.C. § 112 for failing to “disclose sufficient corresponding structure for the [means-plus-function claim] limitation.” Boku Account Services, Inc. v, Xilidev, Inc., Cases CBM2014-00140 and CBM2014-00148 (US Patent 7,273,168) (Nov. 2, 2015). Even assuming the patent disclosed a specially programmed computer, the patent did not disclose “means for completing the transaction request by deducting a transaction amount from a payment source in response to an output from the means for verifying.”
The ‘168 patent disclosed a “payment authorization source 130” that could be used to complete a transaction, “but does not describe any particular structure for payment authorization source 130, instead merely referring to it as a ‘credit card company,’ ‘provider of wireless service,’ or ‘interface to various banks, credit card companies, [or] wireless service providers.’” Further, even if the payment authorization source 130 were a specially programmed computer, the process disclosed in the specification and Figure 3 did not include “any steps pertaining to ‘completing [a] transaction request by deducting a transaction amount from a payment source in response to an output from the means for verifying,’ as recited in claim 17.”
Other claims were addressed on prior art grounds under 35 U.S.C. §§ 102, 103. I have not looked at any other documents relating to this Covered Business Method proceeding, and do not know why there was no analysis of the patent claims under 35 U.S.C. § 101. And unlike some Section 112 cases, this one was easy in that the claims explicitly used means-plus-function language; their was no need to debate whether the claims did or did not recite functional limitations. But regardless of these circumstances, this case demonstrates the risks of functional claiming and the potency of the provisions in 35 U.S.C. § 112 governing functional claiming and indefiniteness.