Wednesday, August 15, 2018

CAFC reverses ITC in Diebold case. Analysis of 112 paragraph 6.

The outcome

We conclude that the term “cheque standby unit” in
the ’235 patent is a means-plus-function term subject to
35 U.S.C. § 112, para. 6, which lacks corresponding structure
disclosed in the specification. We therefore reverse
the Commission’s finding that Diebold violated § 337.

Diebold's argument:

Diebold argues on appeal that “cheque standby unit”
is a purely functional term that connotes no specific
structure and is therefore subject to § 112, para. 6.2
Specifically, it contends that the word “unit” is a “generic
nonce word” akin to “‘mechanism,’ ‘element,’ ‘device,’ and
other nonce words that reflect nothing more than verbal
constructs,” Appellant Br. 30 (quoting Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015)
(en banc)), and highlights that the ’235 patent recites
thirteen different “unit” elements in the claims, each of
which has a unique function. Diebold explains that the
specification includes no discussion of a specific structure
of the “cheque standby unit,” and instead defines the term
exclusively by its function and location. It then points out
that Hyosung’s expert did not testify that the term
“cheque standby unit” connotes sufficiently definite structure,
but instead testified that the term encompasses all
structures capable of fulfilling the function of temporarily
holding checks pending the customer confirming the
deposit, including a nonexhaustive list of structures as
varied as a “suction cup,” a “trap door,” and a “drum.”

Footnote 3 addresses incorporation by reference issues:

At oral argument, counsel for the Commission for
the first time mentioned a patent application incorporated
by reference in the ’235 patent’s specification, arguing
that element 114 of this incorporated patent application,
referred to as a “temporary standby unit,” shows a structure
corresponding to the “cheque standby unit.” Oral
Arg. at 18:14–19:33, available at
17-2553.mp3 (referencing J.A. 5585). Putting aside the
question of waiver, counsel admitted that the section of
the ’235 patent in which this application is incorporated is
directed only to the invention’s tripartite sensors. Id. at
21:15–26. The extent to which material has been incorporated
by reference into a host document is a question of
law, Advanced Display Systems, Inc. v. Kent State University,
212 F.3d 1272, 1283 (Fed. Cir. 2000), and we conclude
that the ’235 patent’s incorporation of this applicaapplication
expressly for its “detailed description” of two
sensors is insufficient to incorporate the application for its
“temporary standby unit,” ’235 patent, col. 5, ll. 3–6.
Counsel admitted, moreover, that the Commission did not
rely on this incorporated application, but relied instead on
the testimony of Dr. Howard. Oral Arg. at 20:00–07.

Both Teva and an 1859 case were cited:

Imposing such a
requirement would be inconsistent with the Supreme
Court’s guidance in Teva Pharmaceuticals, where the
Court held that, even in cases in which the district court
finds a need to look beyond the patent’s intrinsic evidence
and to consult extrinsic evidence, the district court must
still conduct a legal analysis: “whether a skilled artisan
would ascribe that same meaning to that term in the
context of the specific patent claim under review.” 135 S.
Ct. at 841. This is because “‘[e]xperts may be examined to
explain terms of art, and the state of the art, at any given
time,’ but they cannot be used to prove ‘the proper or legal
construction of any instrument of writing.’” Id. (alteration
in original) (quoting Winans v. N.Y. & Erie R. Co., 21
How. 88, 100–01 (1859)). In short, trial courts, after
deciding factual disputes, must interpret patent claims in
light of the facts that they found—“[t]his ultimate interpretation
is a legal conclusion,” and “appellate court[s]
can still review the [tribunal’s] ultimate construction of
the claim de novo.” Id. We specifically applied Teva’s
holding in the context of § 112, para. 6 in Skky, Inc. v.
MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017), explaining
that “[t]he task of determining whether the
relevant claim language contains a means-plus-function
limitation is . . . a question of law that we review de novo.”
Id. at 1019 (alteration in original) (quoting TriMed, Inc. v.
Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008)).

Raritan Computer was cited:

In Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364
(Fed. Cir. 2003), we considered whether claim limitations
reciting “circuits” were subject to § 112, ¶ 6. We began by
noting that the term “circuit,” which one dictionary defines
as “the combination of a number of electrical devices
and conductors that, when interconnected to form a
conducting path, fulfill some desired function,” “by itself
connotes some structure,” and explained that “the term
‘circuit’ with an appropriate identifier such as ‘interface,’
‘programming’ and ‘logic,’ certainly identifies some structural
meaning to one of ordinary skill in the art.” Id. at
1373. We then observed that nothing in the specification
or prosecution history was inconsistent with the ordinary
meaning of the term “circuit,” and pointed out that the
Raritan’s experts’ testimony “show[ed] only that the term
‘circuit’ is understood by one of ordinary skill in the art as
a very broad term and that one of the accused products
included several of the circuit elements.” Id. at 1373–74.
Here, however, the word “unit,” which the ’235 patent
uses to describe thirteen distinct components of the
invention, does not, standing alone, connote any particular
structure. Nor is sufficient structure imparted by
modifying the word “unit” with the words “cheque” and
“standby” or by specifying the location of the “cheque
standby unit.” The ’235 patent offers no guidance as to
what structure or class of structures “placed in the main
transfer path” might be capable of performing the function
of holding checks pending user instructions.

Of law

“Structure disclosed in the specification qualifies as
‘corresponding structure’ if the intrinsic evidence clearly
links or associates that structure to the function recited in
the claim.” Williamson, 792 F.3d at 1352 (citing Noah
Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir.
2012)). “Even if the specification discloses corresponding
structure, the disclosure must be of ‘adequate’ corresponding
structure to achieve the claimed function.” Id. (citation
omitted). Thus, under § 112, paras. 2 and 6, 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, a meansplus-function
clause is indefinite. Id. (citation omitted).


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