Monday, December 15, 2008

SJ grant of noninfringement affirmed by CAFC

The CAFC in Welker Bearing v. PHD found that a claim term to a "mechanism" triggered "means plus function" treatment under 112 P 6-->

This court has had several prior occasions to consider the applicability of means-plus-function treatment in the context of
the claim term “mechanism.” In Massachusetts Institute Of Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (“MIT”), this court considered the
applicability of means-plus-function treatment to the term “colorant selection
mechanism.” This court noted that “[t]he generic terms ‘mechanism,’ ‘means,’ ‘element,’
and ‘device,’ typically do not connote sufficiently definite structure [to avoid means-plus-
function treatment] . . . The term ‘mechanism’ standing alone connotes no more
structure than the term ‘means.’” Id. (emphasis added). Although “[c]laim language that
further defines a generic term like ‘mechanism’ can sometimes add sufficient structure
to avoid 112 ¶ 6,” the adjectival modifier “colorant selection” was not defined in the
specification and did not carry any generally understood structural meaning in the art.

Of infringement-->

Literal infringement of a claim limitation in means-plus-function format “requires
that the relevant structure in the accused device perform the identical function recited in
the claim and be identical or equivalent to the corresponding structure in the
specification.” Applied Med. Research Corp. v. United States Surgical Corp., 448 F.3d
1324, 1333 (Fed. Cir. 2006).

Of equivalents, the CAFC got into a Chiuminatta issue-->

However, an important difference between the two
inquiries “involves the timing of the separate analyses for an ‘insubstantial change.’” Al-
Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Namely, an
equivalent structure under § 112 ¶ 6 “must have been available at the time of the
issuance of the claim,” whereas the doctrine of equivalents can capture after-arising
“technology developed after the issuance of the patent.” Id.

The accused infringer won.

**UPDATE. on "means for" see Ex Parte Catlin, Appeal 2007-3072 (BPAI, February 3, 2009).

When a claim uses the term "means" to describe a limitation, a
presumption inheres that the inventor used the term to invoke 5 112, ¶ 6.
Altiris, Inc. v. Symantec Corp., 3 18 F.3d 1363, 1375 (Fed.Cir.2003). "This
presumption can be rebutted when the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety." Id. Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003).

"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, LLC v. Waters Technologies Corp., 490 F.3d 946,
950 (Fed. Cir. 2007); see also In re Donaldson, 16 F.3d 1
189, 1 195 (Fed. Cir. 1994) (en banc).

In Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d
1328 (Fed. Cir. 2008), the court set forth that for a claim to a programmed
computer, a particular algorithm may be the corresponding structure under
5 112, sixth paragraph:

For a patentee to claim a means for
performing a particular function and then to
disclose only a general purpose computer as the
structure designed to perform that function
amounts to pure functional claiming. Because
general purpose computers can be programmed to
perform very different tasks in very different ways,
simply disclosing a computer as the structure
designated to perform a particular function does
not limit the scope of the claim to "the
corresponding structure, material, or acts" that
perform the function, as required by section 112
paragraph 6.
That was the point made by this court in
WMS Gaming, Inc. v. International Game
Technology, 184 F.3d 1339 (Fed. Cir. 1999). In
that case, the court criticized the district court,
which had determined that the structure disclosed
in the specification to perform the claimed
function was "an algorithm executed by a
computer." The district court erred, this court held,
"by failing to limit the claim to the algorithm
disclosed in the specification." Id. at 1348. The
rationale for that decision is equally applicable
here: a general purpose computer programmed to
carry out a particular algorithm creates a "new
machine" because a general purpose computer "in
effect becomes a special purpose computer once it
is programmed to perform particular functions
pursuant to instructions from program software."


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