|
Federal Circuit Case Law |
Biomedino, LLC v. Waters Technologies Corporation et al.
Decided June 18, 2007
"
If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite."Biomedino sued Waters at the U.S. District Court for the Western District of Washington for allegedly infringing claims that recite "control means for automatically operating valves." Judge Robert Lasnik found the claims invalid on indefiniteness grounds because the specification did not provide structure for the "control means." Biomedino appealed to the Federal Circuit.
The Federal Circuit affirmed because "the only references in the specification to ‘control means’ are a box labeled ‘control’ … and a statement that the (control) ‘may be controlled automatically by known differential pressure, valving and control equipment." In other words, a "bare statement (in the specification) that known techniques or methods can be used does not disclose structure" and fails to support a means plus function claim.
Means plus function claims can be treacherous. Software claims, for example, may recite functional language but should be supported by at least one algorithm or decision tree structure in the specification. On the other hand, the Federal Circuit has found sufficient structure in terms that recite "sensor means" (any and all sensors that carry out the described measurement) and "circuit means" (a circuit that carries out the function).
MIT et al. v. Abacus Software, et
al.
Decided September 13, 2006
Judge Michel with Judges Friedman and Dyk, Michel dissenting
A claim term such as “circuit” that is “used in common parlance….to designate structure, even …a broad class of structures” is not a means plus function.
MIT sued many companies at the U.S. District Court for the Eastern District of Texas for allegedly infringing claims to “a system for reproducing a color original” using “aesthetic correction circuitry.” Judge David Fosom accepted a magistrate’s interpretation of “correction circuitry” as a means plus function claim. Both sides stipulated to a final judgment of non-infringement based on the court’s claim construction, for a rapid appeal of claim construction to the Federal Circuit.
The Federal Circuit reversed the claim construction and vacated the summary judgment because “technical dictionaries….plainly indicate that the term ‘circuit,’ connotes structure.” The Federal Circuit held that this term “is clearly limited to hardware” and further noted that the specification references and examples did not use the term to mean software. Judge Michel dissented with a view that “not every adjectival qualification … connotes sufficiently definite structure” and agreed with the district court’s more narrow interpretation as a means plus function claim.
Patent claims in the engineering fields should exploit broad, structural terms such as “sensor” and “circuit” to denote a wide range of intended embodiments.
Versa Corporation v. Ag-Bag International Limited
Decided December 14, 2004
pdf copy
Judge Dyk with Judges Newman and Rader, Newman dissenting
"[W]hen multiple embodiments in the specification correspond to the claimed function, proper application of 112,(6) generally reads the claim element to embrace each."
Versa sued Ag-Bag in the U.S. District Court for the District of Oregon for alleged infringement of claims to compost bagging machines with "means…for creating channels in the compost material." Judge Dennis Hubel construed this claim term to require both perforated pipes and flutes but Ag-Bag's accused device lacked flutes. Versa admitted no possible infringement under the court's construction and appealed to the Federal Circuit, with the argument that the district court erred in its claim construction.
A majority Federal Circuit panel agreed with Versa because the specification "points out that both structures are not required," and reversed the non-infringement holding. The panel reasoned that Versa's patent specification suggests that machines work with either structure, and states "although it is preferred that both the flutes ..and the pipe… be utilized." Judge Newman dissented because "the patentee cannot point to an isolated suggestion in the specification to eliminate that limitation" and because all figures and other description in the patent showed both structures used together.
A patent practitioner should describe and suggest a wide variety of embodiments in a specification to breathe life into broad claim interpretation during patent enforcement.
Lighting World, Inc. v. Birchwood Lighting, Inc.
Decided September 3, 2004
pdf copy
Judge Bryson with Judges Plager and Linn
A claim term "used in common parlance" may "designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function."
Lighting sued Birchwood at the U.S. District Court for the Central District of California for allegedly infringing claims that recite a light fixture "connector assembly." Judge Percy Anderson construed "connector assembly" as a function limited to corresponding structure(s) described in the specification under 35 U.S.C. 112(6). The court held no infringement based on this narrow definition. Both sides appealed various issues.
The Federal Circuit reversed, using a much broader term definition. The Federal Circuit emphasized resort "to the dictionary to determine if a disputed term has achieved recognition as a noun denoting structure, even in the noun is derived from the function performed" and found that "the term 'connector' has a reasonably well-understood meaning …. in terms of the function it performs."
This case teaches that a word derived from a functional term may describe a broad range of structures in the mechanical arts. This acceptance of functional claim language continues the theme of the Linear Technology Corporation case (June 17), wherein broad structure for a well used functional electronics term was imputed from general knowledge in the field..