Tuesday, October 14, 2014

Bosch loses to SnapOn at the CAFC

In Bosch v. Snap-On, the CAFC affirmed ED Michigan's determination that the claims of the Bosch '313 patent were invalid with no support in the specification for a claim under 112 P 6.

Of the law

Section 112, ¶ 6 (now § 112(f)) 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


If we conclude that a claim term invokes § 112, ¶ 6,
we proceed to the second step and attempt to construe the
disputed claim term by identifying the “corresponding
structure, material, or acts described in the specification”
to which the claim term will be limited. Welker Bearing
Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008). If
we are unable to identify any “corresponding structure,
material, or acts described in the specification,” the claim
term is indefinite. Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1312 (Fed. Cir. 2012) (“[A] means-plus-function
clause is indefinite if a person of ordinary skill in the art
would be unable to recognize the structure in the specification
and associate it with the corresponding function in
the claim.”) (citations omitted).

Of one nuance in the case

On this initial issue we agree with Bosch. We are unaware
of any precedent stating that the presumption is
triggered by a claim’s use of the expression “by means of.”
In the past we have applied the presumption when a
claim uses the word “means” as a noun in the claim: a
“means” for doing something. We have not done so for the
phrase “by means of.”

Therefore, we conclude that the district court erred in
adopting a presumption that “program recognition device”
is a means-plus-function term based on the phrase “by
means of” in claim 1. However, for the reasons discussed
in the Part III.B, infra, that error was harmless, as even
without the benefit of the presumption, “program recognition
device” still invokes § 112, ¶ 6.

But Bosch still had problems

Although both “program recognition device” and “program
loading device” are presumed not to invoke § 112,
¶ 6, we must next turn to the issue of whether this
“strong” presumption against means-plus-function claiming
is overcome. See Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). In
undertaking this analysis, we ask if the claim language,
read in light of the specification, recites sufficiently definite
structure to avoid § 112, ¶ 6. Inventio, 649 F.3d at
1357. The question is whether the claim language names
particular structures or, instead, refers only to a general
category of whatever may perform specified functions.
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536
(Fed. Cir. 1991) (“[t]he recited structure tells only what
the means-for-joining does, not what it is structurally”).
In the latter case, § 112, ¶ 6 then commands a construction
of the limitation as referring to specificationidentified
corresponding structures and their equivalents.
Snap-On argues that the claim terms “program recognition
device” and “program loading device” each lack
sufficiently definite structure. Indeed, this court has
found the word “device” to be a non-structural, “nonce”
word. See Mass. Inst. of Tech. v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media
Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705
(Fed. Cir. 1998). And the other words do nothing more
than identify functions for the “device” to perform.

Of expert witnesses:

Finally, Bosch argues that the district court improperly
disregarded the declaration of its expert witness, Dr.
Wagner, who is also a named inventor. At a minimum,
Bosch alleges that this declaration created a disputed
issue of material fact.

merely listing examples of possible structures is insufficient
to avoid invocation of § 112, ¶ 6.

Bottom line

Since we agree with the district court that both “program
recognition device” and “program loading device”
are means-plus-function terms and that the specification
does not disclose the requisite corresponding structures,
we affirm the district court’s holding that all claims in the
’313 patent are invalid as indefinite.


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