United States: Means-Plus-Function Claims Require Disclosure Of Means

In its decision in Robert Bosch, LLC v. Snap-On Inc., No. 2014-1040 (Fed. Cir. Oct. 14, 2014), the Federal Circuit considered whether certain claim elements ("program recognition device" and "program loading device") should be interpreted as means-plus-function terms under 35 U.S.C. § 112, ¶ 6 (pre-AIA designation), notwithstanding the absence of the word "means" in these elements.¹  In finding that the elements were indeed properly interpreted as "means-plus-function" claims, the lack of corresponding structure for the means in the specification doomed the claims as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA designation).

Bosch asserted U.S. Patent No. 6,782,313 ("the '313 patent") against defendants Snap-On and Drew Technologies in the U.S. District Court for the Eastern District of Michigan.  See Robert Bosch LLC v. Snap-On, Inc., No. 12-11503, 2013 WL 4042664 (E.D. Mich. Aug. 9, 2013).  The '313 patent concerns an automotive diagnostic testing device that evaluates a vehicle's on-board engine control computer.  The device, as claimed, includes a "program recognition device" and a "program loading device."  Although the specification describes the functions performed by these devices in detail, the specification otherwise completely lacked detail regarding their structure.  The issued '313 patent had only three pages, with the "Detailed Description" taking a total of about a half page.  The '313 patent contained no figures.   

The Federal Circuit began its analysis by noting that the word "device" is a nonstructural "nonce word," that is to say, a word essentially lacking any definite meaning.  Robert Bosch, No. 2014-1040, slip op. at 8.  The other terms of the claim, the court noted, were entirely functional, and the specification "does not contain a single reference to the structure" of the devices.  Id. at 9.  Because the claims lack sufficiently definite structure, they fall within the reach of § 112, ¶ 6.  See Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011).

Having determined that the "program recognition device" and "program loading device" were to be interpreted under § 112, ¶ 6, the court then undertook the second step of construing a means-plus-function recitation, that is identifying structure in the specification that performs the claimed functions.  This part of the analysis was rather straightforward because, as already mentioned above, there was no structure to be found in the specification.

In light of the Robert Bosch decision, patent prosecutors should be cautious when drafting claims containing only functional descriptions.  Such claims are vulnerable to interpretation under 35 U.S.C. § 112, ¶ 6, now 35 U.S.C. § 112(f) (post-AIA designation).  If such claim strategy is used, it is advisable to have a specification that contains robust corresponding structural details for performing any claimed functions, starting with how components interconnect and interact, and ending with specific structural details about each component.

Footnote

1 Claim 1 did contain a passage stating that a connected engine control module is recognized "by means of" the program recognition device, but the Federal Circuit stated this is not a typical "means-plus-function" format.  The court therefore found there was no presumption that 35 U.S.C. § 112, ¶ 6 should apply.

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