United States: Claims Indefinite For Lacking Sufficient Structure When Specification Provides Only Functional Descriptions Of Claim Terms

In Robert Bosch, LLC v. Snap-On Inc., No. 14-1040 (Fed. Cir. Oct. 14, 2014), the Federal Circuit affirmed the district court's finding that the claim terms "program recognition device" and "program loading device" invoked 35 U.S.C. § 112, ¶ 6, and were indefinite because the specification did not describe a corresponding structure.

Robert Bosch, LLC ("Bosch") owns U.S. Patent No. 6,782,313 ("the '313 patent"), which claims a diagnostic tester that determines whether a motor vehicle's computerized control unit needs to be reprogrammed.  The claimed diagnostic tester includes a "program recognition device" and a "program loading device."  Slip op. at 2.  The specification contains no figures, but states that the "program recognition device" connects to the motor vehicle via a diagnostic plug and that the "program loading device" connects to a control unit through the diagnostic plug. 

Bosch sued Snap-On Inc. ("Snap-On") in the Central District of California, alleging infringement of the '313 patent.  Bosch later added infringement claims against Drew Technologies, Inc. ("Drew"), and the case was transferred to the Eastern District of Michigan.  After initial claim construction briefing, Snap-On and Drew asserted that "program recognition device" and "program loading device" were means-plus-function terms under § 112, ¶ 6, and were indefinite.  The district court agreed, finding that both terms were indefinite means-plus-function terms.  The parties then stipulated to a final judgment of invalidity.  Bosch appealed.

"Because the '313 patent's disclosures of 'program recognition device' and 'program loading device' are solely functional, one of ordinary skill in the art could not find in the specification a definition of the terms as referring to a particular structure."  Slip op. at 10.

On appeal, the Federal Circuit applied a two-step evaluation to determine whether the claim terms invoke § 112, ¶ 6.  The Court first found that neither claim term triggered a presumption of § 112, ¶ 6, because the terms did not recite the word "means."  The Court determined that the district court erred by finding that the language "by means of" invoked this presumption, stating that it was "unaware of any precedent stating that the presumption is triggered by a claim's use of the expression 'by means of.'"  Id. at 7.  This phrase, the Court explained, was not equivalent to using "means" as a noun and therefore did not invoke the presumption of means-plus-function language under § 112, ¶ 6, but instead created a rebuttable presumption against invoking § 112, ¶ 6.

The Court found, however, that the district court's error was harmless because the presumption against § 112, ¶ 6, was overcome.  The Court observed that both the claim language and the specification describe the "program recognition device" and the "program loading device" using only functional language and did not describe a structure for either term.  The Court agreed with Snap-On that "the '313 patent's specification does not contain a single reference to the structure of the 'program recognition device' itself; all of the proffered citations from the specification merely explain its function."  Id. at 9.  The Court concluded that the specification is "silent about any interaction between the 'program recognition device' and other components of the system," and does not teach how the program recognition device receives and processes signals, noting that "the words 'signal' and 'process' are not even in the specification."  Id.  The Court also rejected Bosch's arguments relating to the "program loading device," finding that "the '313 patent is silent on what such a 'program loading device' consists of; the loading could be achieved by using any type of device that comprises hardware, software, or both."   Id. at 10.  Thus, the Court concluded that "[b]ecause the '313 patent's disclosures [of the terms] are solely functional, one of ordinary skill in the art could not find in the specification a definition of the terms as referring to a particular structure."  Id.

Next, the Court considered whether Bosch's expert declaration created a disputed issue of material fact about whether the specification included sufficient structure.  The Court noted that the expert asserted that the claim terms were generally understood to have structural meanings in the art, but determined that those "statements are both conclusory and unhelpful to Bosch."  Id. at 11.  The Court rejected the expert's declaration, explaining that "[l]abeling the devices as 'electronic' and repeating their function does not identify structure."  Id.  The Court determined that the expert's examples of possible structures were also insufficient to avoid invoking § 112, ¶ 6, because "means-plus-function language that defines a category in functional terms will typically cover examples of structures that fall within it."  Id. at 11-12.  The Court concluded that this was "not a basis for distinguishing structural language from § 112, ¶ 6 language."  Id. at 12.  The Court therefore held that the two claim terms invoked § 112, ¶ 6.

The Court then turned to the second step of the inquiry and determined that the claims were indefinite because there was no accompanying structural specification.  Because the terms-at-issue were found in the independent claims, the Court held that all the claims of the '313 patent were indefinite and therefore invalid.

Accordingly, the Court affirmed the district court's holding that all the claims of the '313 patent are invalid as indefinite.

This article previously appeared in Last Month at the Federal Circuit - November 2014

Judges: Prost (author), Taranto, Hughes

[Appealed from E.D. Mich., Judge Cleland]

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