I think a lot of practitioners will take note of Chief Judge Prost’s precedential opinion for the court today in TEK Global, S.R.L., et al. v. Sealant Systems Int’l. Inc., et al. In assessing whether a phrase invoked 112¶6/112¶(f), Chief Judge Prost looked to the dependent claims to see if they indicated that the purported means plus function phrase was structural:
Even more, the dependent claims suggest that § 112, ¶ 6 does not govern. Indeed, they “add limitations that either describe particular structural features or flesh out whether the term has a particular structural meaning.”Diebold, 899 F.3d at 1298. For example, dependent claim 27 recites “at least one of said conduits . . . comprises a hose.” ’110 patent col. 8 ll. 12–14. And SSI does not dispute that the “hose” disclosed in the ’110 patent is structural.
You can read Chief Judge Prost’s precedential opinion for the court [here].
You can read the referenced Diebold Nixdorf v. ITC opinion [here].
The PTO might want to take note that its recent guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” does not mention the Diebold case from August 2018 nor the use of dependent claims to analyze purported MPF terms. A discussion of Diebold and TEK Global would be a useful addition to the recent guidance.