Thursday, June 16, 2011

Inventio case on 35 USC 112

Of the issue:

Central to this appeal is whether the terms “modern-
izing device” and “computing unit” are means-plus-
function limitations that fall within the ambit of
§ 112, ¶ 6. Because we conclude that the claimed “mod-
ernizing device” and “computing unit” are not means-plus-
function limitations, we do not address whether the
written descriptions disclose corresponding structure.

Of the law:

Section 112, ¶ 6 allows a patentee to express a claim
limitation as “a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof,” and the section provides that claim
limitations expressed in this manner “shall be construed
to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.”
That provision applies “only to purely functional limita-
tions that do not provide the structure that performs the
recited function.” Phillips v. AWH Corp., 415 F.3d 1303,
1311 (Fed. Cir. 2005) (en banc). Whether certain claim
language invokes § 112, ¶ 6 is an exercise in claim con-
struction and is therefore a question of law, subject to de
novo review. Personalized Media Commc’ns, LLC v. ITC,
161 F.3d 696, 702 (Fed. Cir. 1998).

The framework under which we determine if a claim
limitation invokes § 112, ¶ 6 is straightforward. The use
of the term “means” triggers a rebuttable presumption
that § 112, ¶ 6 governs the construction of the claim term.
TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed.
Cir. 2008). Conversely, where, as here, the claim lan-
guage does not recite the term “means,” we presume that
the limitation does not invoke § 112, ¶ 6. Personalized
Media, 161 F.3d at 703–04. When a claim term lacks the
word “means,” the presumption can be overcome if the
challenger demonstrates that “the claim term fails to
‘recite sufficiently definite structure’ or else recites ‘func-
tion without reciting sufficient structure for performing
that function.’” CCS Fitness v. Brunswick Corp., 288 F.3d
1359, 1369 (Fed. Cir. 2002) (quoting Watts v. XL Sys.,
Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

Of the analysis:

Relying primarily on Personalized Media,
Inventio argues that, to determine if a claim term that
lacks the word “means” is subject to § 112, ¶ 6, the court
should consider the intrinsic record.
We agree with Inventio. Claims are interpreted in
light of the written description supporting them, and that
is true whether or not the claim construction involves
interpreting a “means” clause. The presumption that a
claim lacking the term “means” recites sufficiently defi-
nite structure can be rebutted “if the evidence intrinsic to
the patent and any relevant extrinsic evidence so war-
rant[s].” Personalized Media, 161 F.3d at 704. In decid-
ing whether a challenger has rebutted the presumption,
“the focus remains on whether the claim as properly construed
recites sufficiently definite structure to avoid
the ambit of § 112, ¶ 6.” Id. To determine the proper
construction of a claim term, we look to the words of the
claims themselves, the written description, the prosecu-
tion history, and any relevant extrinsic evidence. Phil-
lips, 415 F.3d at 1315–17. In addition, we allow an
inventor to provide, in the written description, express
definitions for terms that appear in the claims, and those
definitions govern the construction of the claims. Id. at 1316.

Toward the beginning of the opinion about ThyssenKrupp’s motion to strike:

ThyssenKrupp’s motion lacks merit. It reargues the
merits of the case. ThyssenKrupp simply disagrees with
Inventio’s legal arguments, and its motion seems to us to
be an improper attempt to obtain the final word in the
appeal, a practice that we strongly discourage. See
Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341,
1343–44 (Fed. Cir. 2011). Its nasty tone is exemplified by
use of the word “blatantly” or “blatant” at least four times.
Thus, ThyssenKrupp’s filing of this motion borders on the
type of frivolous and wasteful litigation tactics that we
have previously frowned upon. See Otocom Sys., Inc. v.
Houston Computer Servs., Inc., 918 F.2d 937, 943–44
(Fed. Cir. 1990). We accordingly deny ThyssenKrupp’s
motion and turn to the merits of Inventio’s appeal.


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