When claiming under 112 P 6, be sure to recite structure
The case involved a "means plus function" claim under 35 USC 112 P6:
Because we find that the term “voltage source means” in the claims of the ’529 Patent is a means-plus-function limitation under § 112, ¶ 6, and because we find in the specification no corresponding structure, we hold the claims invalid for indefiniteness and reverse the judgment of the district court.
Of the history:
ULT again moved for summary judgment, renewing its argument that the term “voltage source means” invokes means-plus-function claiming and is indefinite. The district court responded that it had “twice addressed this limitation” and declined “to address the same issue a third time.” Joint App. 62. At the close of evidence, ULT moved for judgment as a matter of law (“JMOL”) under FRCP 50(a), but did not continue to dispute the court’s construction of “voltage source means.” The court denied ULT’s JMOL motion. The district court stated in its jury charge that the term “voltage source means” refers to “a rectifier.” ULT did not object to this aspect of the jury charge. After the jury found claim 1 and its dependent claims 2 and 5 valid and infringed, ULT renewed its JMOL motion under FRCP 50(b) but did not press its argument regarding the court’s construction of “voltage source means.” The district court denied ULT’s JMOL motion and entered final judgment in favor of Lighting Ballast.
As to a waiver argument:
To determine whether a party waived a defense, we look to law of the applicable regional circuit, which in this case is the Fifth Circuit. See Ultra-Precision Mfg. v. Ford Motor Co., 411 F.3d 1369, 1376 (Fed. Cir. 2005). In the Fifth Circuit, “[i]t is a well-settled rule of law that an appeal from a final judgment raises all antecedent issues previously decided.” Exxon Corp. v. St. Paul Fire & Marine Ins. Co., 129 F.3d 781, 784 (5th Cir. 1997). “[O]nce a final judgment is entered, all earlier non-final orders affecting that judgment may properly be appealed.” Id. Thus, “a party may obtain review of prejudicial ad- verse interlocutory rulings upon his appeal from adverse final judgment, at which time the interlocutory rulings (nonreviewable until then) are regarded as merged into the final judgment terminating the action.” Dickinson v. Auto Center Mfg. Co., 733 F.2d 1092, 1102 (5th Cir. 1983).
This is not a situation where a party has failed to raise an issue before the trial court that it seeks to have us review on appeal. ULT twice moved for summary judgment and argued its proposed construction of “voltage source means.” In response to ULT’s second motion for summary judgment, the district court denied the motion and ruled that it would not “address the issue a third time,” at which point the dispute surrounding the “voltage source means” became fully litigated. The district court’s final claim construction and indefiniteness ruling con- cerned only questions of law. See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed. Cir. 2007) (noting that an indefiniteness determination, like claim construction, is a question of law). Thus, the district court’s interlocutory ruling regarding the “voltage source means” merged into the final judgment terminating the action. See Dickinson, 733 F.2d at 1102.
Once ULT’s position regarding the “voltage source means” was made clear to the district court, ULT was not required to renew its arguments during jury instructions. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1359 (Fed. Cir. 2008) (“When the claim construction is resolved pre-trial, and the patentee pre- sented the same position in the [pre-trial] proceeding as is now pressed, a further objection to the district court’s pre- trial ruling may indeed have been not only futile but unnecessary.”). As a result, we find that ULT preserved its claim construction and indefiniteness argument with respect to “voltage source means” and that the issue is properly raised on appeal.
Of 112 P 6:
The statute thus establishes a quid pro quo whereby a patentee may conveniently claim an element using a generic “means” for performing a function, provided the patentee’s specification discloses structure capable of performing that function. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999). Whether a claim limitation invokes means-plus- function claiming under § 112, ¶ 6, is a matter of claim construction and therefore a question of law that we review without deference. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc).
In this case:
Failure to disclose adequate structure to support a generic “means” expression amounts to impermissible functional claiming. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). If the patentee fails to disclose adequate structure, the claim is invalid as indefinite under 35 U.S.C. § 112, ¶ 2. See In re Donaldson, 16 F.3d at 1195.
We hold that the ’529 Patent fails to disclose structure capable of “providing a constant or variable magnitude DC voltage between the DC input terminals.”
As already noted, Lighting Ballast relies on expert testimony to support its contention that one skilled in the art would readily ascertain structures capable of perform- ing the recited function. But “testimony of one of ordinary skill in the art cannot supplant the total absence of struc- ture from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005). Lighting Ballast’s testimony merely demonstrates that several different structures could perform the recited function, namely, a rectifier, battery, solar cell, or generator. The possibility that an ordinarily skilled artisan could find a structure that would work does not satisfy the disclosure requirements of means- plus-function claiming under § 112. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363–64 (Fed. Cir. 2012); see also Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinary skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘mean-plus- function’ form must disclose the particular structure that is used to perform the recited function.”).
Because we hold that the term “voltage source means” in claim 1 of the ’529 Patent invokes means-plus-function claiming under § 112, ¶ 6, and because we find in the specification no corresponding structure, we find the asserted claims invalid for indefiniteness under § 112, ¶ 2. We need not address the other issues raised by ULT. The judgment below is