Functional claims have caused many headaches for academics, judges and practitioners who have struggled to define precisely what constitutes “functional” claim language and to determine the proper scope afforded to broad means-plus-function claim elements. The debate between academics and judges regarding functional claim interpretation has typically focused on Congressional intent behind the statute, specifically whether 35 U.S.C. § 112, ¶ 6 was intended solely as a claim interpretation tool or only as means for narrowing functional claims during an infringement analysis. The Federal Circuit famously adopted a hybrid approach in In re Donaldson, but since then several authors have levied serious criticisms of the current framework. For practitioners, the trigger for evoking the statute has always been somewhat ambiguous and the Federal Circuit’s recent opinion in Massachusetts Institute of Technology v. Abacus Software only exacerbates the confusion. This comment consolidates the critiques of the Federal Circuit’s current approach and proposes that the perceived inequities of the current system can be resolved by adopting a separate claims prosecution process for functional claims.
Nathaniel V. Riley, The Crossroads of Patentability & Validity: Why Resolving Congressional Intent Will Not Fix Functional Claims, 7 J. Marshall Rev. Intell. Prop. L. 218 (2007)