“Adapted to” Survives Means-Plus-Function Presumption

During prosecution, “adapted to” claim language can often pose problems.  See, for example, MPEP §2114.04 which indicates that such language may be questionable as to its limiting effect.  Still, it is often convenient to use “adapted to” language to describe structural features functionally (e.g., X adapted to perform Y).  However, this raises the possibility such language will be treated as a means-plus-function limitation under 35 USC §112(f).  (While means-plus-function language is not inherently problematic, its use can introduce an additional level of uncertainty in interpreting the claims and may even limit their literal scope which is defined as the specific embodiments of the means disclosed in the specification and equivalents thereof.)   The Federal Circuit recently considered this point in VDPP LLC v. Vizio, Inc. [https://cafc.uscourts.gov/opinions-orders/21-2040.OPINION.3-25-2022_1926745.pdf].

VDPP LLC sued Vizio Inc. for infringement of three patents[1], all directed to devices said to create an “illusion of continuous movement.”[2]  The asserted claims recited a storage “adapted to” store image frame(s) and a processor “adapted to” obtain and manipulate image frames.  Vizio asserted an invalidity defense based on indefiniteness (35 U.S.C. §112(b)) because the “storage” and “processor” features were means-plus-function limitations under 35 U.S.C. §112(f) for which there were no corresponding structures described in the specifications.  The district court agree with Vizio and held the claims to be invalid due to indefiniteness, describing the “storage” and “processor” features as black boxes.

In reversing the district court’s decision, the Federal Circuit noted that the analysis for 35 U.S.C. §112(f) is a two-step process (citing their recent decision in Dyfan, LLC v. Target Corp., No. 2021-1725, (Fed. Cir. 2022).  First, one must determine whether §112(f) applies, and, second, one must determine whether the specification sets forth corresponding structure.

Here, the Federal Circuit found that the district court’s determination that §112(f) applies, step one, was improper due to the presumption stemming from “means” being absent from the claim; namely, that if “means” is absent from the claim, then it is presumed that §112(f) does not apply (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015)).  To overcome this presumption, one must present evidence that a person of ordinary skill would not have understood the language to connote sufficiently definite structure (citing Dyfan and Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003)).

The Federal Circuit noted that, while acknowledging the presumption, the district court concluded the presumption was overcome, even though Vizio had presented no evidence in support.  Further, the Federal Circuit argued that the district court failed to take into account intrinsic evidence which indicated that one skilled in the art would recognize that “storage” and “processor” connoted structure to one of ordinary skill in the art.  In this regard, the Federal Circuit referred to the following general disclosure:

Systems, apparatus, and methods described herein may be implemented using digital circuitry, or using one or more computers using well-known computer processors, memory units, storage devices, computer software, and other components.[3]

Practice Tips:

The first tip is fairly straightforward.  If you want §112(f) to apply in apparatus claims, make sure “means” is present in the claim to avoid the presumption.  Second, when intending to use “adapted to” claim language for broad terms (e.g., A unit adapted to due β; stage C adapted to perform Δ, etc.), where applicable, include in the specification language that indicates structure(s) associated with such terms are well-known (and also include examples of such structures, just in case).

[1] U.S. Patent Nos. 9,699,444; 9,948,922; and 10,021,380.  US ‘922 and US ‘380 are each CIPs of US ‘444.

[2] US ‘380 at column 9, lines 16-17.

[3] US ‘380 at column 62, lines 48-62.  This same disclosure is present in US ‘922, but not in the ancestor patent US ‘444.


If you have any questions regarding the topics above, contact Brion Heaney at heaney@mwzb.com.


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