“Overzealous” Use of the Term “Means” Negates Application of Section 112, Paragraph 6

Delaware district judge Joseph J. Farnan Jr. recently issued a comprehensive claim construction opinion involving the Verisign computer-access security system. Of note is the Court’s analysis of the means-plus-function and step-plus-function construction rules under 35 U.S.C. � 112, � 6.

For one claim, the Court noted that the patentee chose to employ the means-plus-function rules by using the phrase “clearinghouse means.” Thus, “a consequence of [this] choice is that [the] scope of the means-plus-function limitation is limited to the corresponding structure described in the specification and equivalents thereof.” (slip op. at 34).

Interestingly, the Court then declined to apply Paragraph 6 to the identical phrase as used in a subsequent claim. The Court distinguished between means-plus and step-plus claim elements, and noted that the simple presence of the term “means” or “step” (as opposed to “steps for”) does not automatically signal the applicability of Paragraph 6. Examining the claim as a whole — “a method of controlling access . . . comprising the steps of [the clearinghouse means]” — the Court rejected plaintiff’s argument that the means- or step-plus analysis applied. Instead, the term “clearinghouse means” was “little more than an overzealous use of the word means.” (slip op. at 37).

This opinion is a reminder that parties should not slice their claim construction arguments too thin — context, and not the import of words in isolation, will ultimately control.

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