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[Ghoti]

I was 'told' the below but I'm not sure how over-simplified (or correct) the comment was.

If there is a product which has the functionality to do ABC but that functionality is not used (or made available for the consumer to use) and...
Claim 1) Method of doing ABC.
Claim 2) Means for doing ABC.

The product would infringe the means claim but not the method, because the product has the 'means' but does not do the 'method'.

I'd appreciate any light you can shed, or further reading you can point me to.

[JimIvey]

You infringe a method claim by performing the method (i.e., the steps of the method in the manner recited in the claim).

You infringe an apparatus or article claim by making, using, selling, or importing an apparatus or article described by the claim.

A means for doing something (i.e., some apparatus or article that provides one with the ability to do the thing) is different from actually doing the thing.

I hope that helps.

Regards.

[MolecularAgent66076]

Hi JimIvey:

How are these two means and method claims different (other than the tense), assuming I have drafted them correctly?

Means for crossing the street comprising:
1) Looking left
2) Looking right
3) Looking left again
4) Stepping on the roadway
5) Walking across the roadway
6) Stepping on the sidewalk on the other side

Method to cross the street comprising:
1) Look left
2) Look right
3) Look left again
4) Step on the roadway
5) Walk across the roadway
6) Step on the sidewalk on the other side

Thank you.

[Ghoti]

This is exactly my quandry.

If my product is a robot to cross streets which has feet. However, in those feet are wheels so that the feet aren't used for 'walking' but are used for skating. (ignoring equivalents)

Then my robot does not infringe the method claim, as it does not walk.
Does my robot infringe the means claim because it could walk if I removed the wheels, and enabled the walking program which I wrote but haven't activated in my sold robot?

[blakesq]

You have drafted the device/means claim improperly.  The method claim is generally ok, you need to use the gerund form of the verb though (eg. "looking"". 

The device claim would be more proper as follows:

A device for crossing the street comprising:
1) a means for Looking left
2) a means for Looking right
3) a means for Looking left again
4) a means Stepping on the roadway
5) a means for Walking across the roadway
6) a means for Stepping on the sidewalk on the other side


In the above example, you are claiming a device.  Element 1, is a component that has the means for looking left, perhaps a camera on a swivel.  Thus, a device may infringe the above device claim. 

Hi JimIvey:

How are these two means and method claims different (other than the tense), assuming I have drafted them correctly?

Means for crossing the street comprising:
1) Looking left
2) Looking right
3) Looking left again
4) Stepping on the roadway
5) Walking across the roadway
6) Stepping on the sidewalk on the other side

Method to cross the street comprising:
1) Look left
2) Look right
3) Look left again
4) Step on the roadway
5) Walk across the roadway
6) Step on the sidewalk on the other side

Thank you.

[blakesq]

If your robot does not have a means for walking, then it cannot infringe the means claim.  If a person has to modify the robot in order to make it an infringing device, then, the patent owner will have a difficult time proving infringement. 

If you make a robot that can walk, then you have infringed the means claim. 

This is exactly my quandry.

If my product is a robot to cross streets which has feet. However, in those feet are wheels so that the feet aren't used for 'walking' but are used for skating. (ignoring equivalents)

Then my robot does not infringe the method claim, as it does not walk.
Does my robot infringe the means claim because it could walk if I removed the wheels, and enabled the walking program which I wrote but haven't activated in my sold robot?

[Ghoti]

Thanks blakesq for your clear answer. It matches what I had origionally thought.

I must have misunderstood what I was 'told'.

[ChrisWhewell]

I was 'told' the below but I'm not sure how over-simplified (or correct) the comment was.

If there is a product which has the functionality to do ABC but that functionality is not used (or made available for the consumer to use) and...
Claim 1) Method of doing ABC.
Claim 2) Means for doing ABC.

The product would infringe the means claim but not the method, because the product has the 'means' but does not do the 'method'.

I'd appreciate any light you can shed, or further reading you can point me to.

Sometimes with "means for" present in claim language, a new set of questions is opened concerning the claim re section 112 which if present might make it tough to answer your question as written.

[MolecularAgent66076]

Ok, got it blakesq that my methods claims are improper.  But as for the means claims, I thought that is the beauty or the trick behind means claims is that you don't have to claim the device.  Why are you still claiming a device?  I guess you could, but you don't have to.  Correct me if I am wrong please.  Thanks.

You have drafted the device/means claim improperly.  The method claim is generally ok, you need to use the gerund form of the verb though (eg. "looking"". 

The device claim would be more proper as follows:

A device for crossing the street comprising:
1) a means for Looking left
2) a means for Looking right
3) a means for Looking left again
4) a means Stepping on the roadway
5) a means for Walking across the roadway
6) a means for Stepping on the sidewalk on the other side

In the above example, you are claiming a device.  Element 1, is a component that has the means for looking left, perhaps a camera on a swivel.  Thus, a device may infringe the above device claim. 

Hi JimIvey:

How are these two means and method claims different (other than the tense), assuming I have drafted them correctly?

Means for crossing the street comprising:
1) Looking left
2) Looking right
3) Looking left again
4) Stepping on the roadway
5) Walking across the roadway
6) Stepping on the sidewalk on the other side

Method to cross the street comprising:
1) Look left
2) Look right
3) Look left again
4) Step on the roadway
5) Walk across the roadway
6) Step on the sidewalk on the other side

Thank you.

[blakesq]

You are wrong.  A "means claim" simply means that you are defining an element of your claim as "a way of doing something" rather than limiting it to a particular device.  for instance:

I claim:

A device for sitting, the device comprising:

a means for supporting the device off the ground;
a seat attached to the means for supporting the device off the ground; and
a back attached to the seat. 

Here, the device is a chair.  We are using means language for the legs.  thus we are not limited to legs on a chair, it could be any supporting device, like an oil drum; a box, anything (the limitiation being that it needs to be disclosed in the specification).  However, the claim is directed to a DEVICE, the chair. 

Ok, got it blakesq that my methods claims are improper.  But as for the means claims, I thought that is the beauty or the trick behind means claims is that you don't have to claim the device.  Why are you still claiming a device?  I guess you could, but you don't have to.  Correct me if I am wrong please.  Thanks.

[khazzah]

Ok, got it blakesq that my methods claims are improper.  But as for the means claims, I thought that is the beauty or the trick behind means claims is that you don't have to claim the device.  Why are you still claiming a device?  I guess you could, but you don't have to.  Correct me if I am wrong please.  Thanks.

I agree with everything Blakeesq said: you're absolutely claiming a device rather than a method.

But maybe the "trick" which NovelAgent refers to is this: a means doesn't claim ONE PARTICULAR device that performs the function. Instead, the means covers EVERY device DESCRIBED IN THE SPEC that performs the function.

The DESCRIBED IN THE SPEC part makes means-plus-function claiming much more limiting that some folks seem to appreciate.

[JimIvey]

I'll only chime in because I was addressed by name.  Blakesq has answered everything correctly (though I skimmed a bit briefly).

I was trying to figure out some way to define "means" without using "means."  Finally turned to a dictionary: "instrumentality used to achieve an end".  The instrumentality is a thing -- article (object with no moving parts, e.g., claw hammer) or a machine/apparatus (object with moving parts, e.g., pneumatic jack hammer).

Note that "means for" is a special phrase in patent law and is controlled by the law in a very specific way.  You should avoid using it unless you understand that law and know what you're doing.  I find the language useless (given its very narrow interpretation) and avoid it.

Regards.

[DogDayPM 9er9er9er]

I was trying to figure out some way to define "means" without using "means."  Finally turned to a dictionary: "instrumentality used to achieve an end".  The instrumentality is a thing -- article (object with no moving parts, e.g., claw hammer) or a machine/apparatus (object with moving parts, e.g., pneumatic jack hammer).

Golly, Jim, didn't your Grandpa always tell you that the ends don't justify the instrumentalities??

[MolecularAgent66076]

Everyone,

I apologize, I had a brain fart.  Of course, the means claims refer to a device that is described in the spec.  Duh duh duh!!!

Although, let me get this clear for  myself:  method claims --> claim only method, means claims --> claim device/apparatus/instrument (described in the spec) that performs the method.  Correct?  Thanks.

[JimIvey]

Thanks, DDPM.  Yes, "means" are the things not justified by the ends.  [forehead-slap]

Although, let me get this clear for  myself:  method claims --> claim only method, means claims --> claim device/apparatus/instrument (described in the spec) that performs the method.  Correct?  Thanks.

Normally, you don't see a pure means claim.  I claim: 1. A means for.....  In fact, I've never seen one.  You typically see some sort of device claim like the one Blakesq presented, where "means for" is/are elements of the device claim.

Briefly, "means for [performing some function]" covers exactly what the specific specification describes as performing that function -- exactly -- "and equivalents thereof".  "means for" used to cover any means for performing the function -- very broad.  But Section 112, paragraph 6 put an end to that.  Why on Earth should English phrases mean what they mean?

And, the caselaw developing around S 112, p 6 shows that the "equivalents" are extremely narrow -- meaning almost none at all.  I believe the tendency of many specifications to list excessively long (attempts at exhaustive) lists of things that can do this or that is a legacy left over from the days where people were trying to fill out their means+function claims.  I haven't written a means+function claim in over a decade, probably.

Personally, I think it's worse to attempt to present an exhaustive list of alternative and fall short than to not attempt the exhaustive list in the first place.  Don't want to ever admit on the stand that the list represents everything (literally) that I intended to be covered in a particular claim element.  I'd much prefer to admit that many things were left off the list because the list was never intended to be exhaustive, only to be illustrative as examples.

Regards.