Federal Circuit Holds that 35 U.S.C. § 112 ¶ 6 Can be Applied to Claim Terms Which Combine a Generic Placeholder with Purely Functional Language, Even Absent the Word “Means”

The Court of Appeals for the Federal Circuit, in Kyocera Senco Indus. Tools, Inc., et. al. v. ITC & Koki Holdings Am. Ltd., et. al., No. 2020-1046, 2020-2050 (Fed. Cir. Jan. 21, 2022), reversed the ITC’s determination that 35 U.S.C. § 112 ¶ 6 did not apply to the term “lifter member”. The CAFC found that “lifter member” invoked 35 U.S.C. § 112 ¶ 6 because it was merely a non-structural generic placeholder (i.e., “member”) modified by functional language (i.e., “lifter”). The CAFC further supported its determination by noting that the surrounding claim language only provided functional (rather than structural) information, and the specification failed to provide a clear and unambiguous definition of “lifter member.”

Opinion can be found here: https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf

Case ClIPs

Federal Circuit Holds that 35 U.S.C. § 112 ¶ 6 Can be Applied to Claim Terms Which Combine a Generic Placeholder with Purely Functional Language, Even Absent the Word “Means”