United States: Federal Circuit Review - Issue 30

Disclosures that do no more than recite functions cannot meet the "means-plus-function" requirements of §112 ¶ 6.

Robert Bosch, LLC v. Snap-on, Inc. & Drew Tech., Inc., No. 2014-1040, (Fed. Cir. Oct. 14, 2014) (Prost, CJ.). Click Here for a copy of the opinion.


Bosch sued Snap-On and Drew Technologies for infringing US patent no. 6,782,313. The district court held that the claim language "by means of the program recognition device" (likewise "program loading device") is indefinite under 35 U.S.C. §112 ¶ 6 ("means plus function" claims), for failing to disclose corresponding structure. Bosch appealed.


The Federal Circuit disagreed that "by means of" automatically triggered a "means plus function" analysis. However, it concluded that the district court's error was harmless and affirmed that "program recognition device" and "program loading device" nevertheless invoked §112 ¶ 6 for other reasons.


Specifically, the Federal Circuit asked "whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions." The court concluded that the '313 specification "provide no structural guidance" and disclosures of "program recognition device" and "program loading device" are "solely functional." Because the claim terms invoked §112 ¶ 6, and because there was no "corresponding structure" in the specification, the Federal Circuit affirmed that "program recognition device" and "program loading device" are indefinite.


Attorney's fees to a "prevailing party" do not require a patentee to succeed on all of its infringement claims.


SSL Servs., LLC v. Citrix Sys. Inc. & Citrix Online, LLC, No. 2013-1419, -1420, 2014 U.S. App. LEXIS 19672, (Fed. Cir. Oct. 14, 2014) (O'Malley, J.). Click Here for a copy of the opinion.


SSL sued Citrix Systems and Citrix Online (collectively, "Citrix") for infringing US patent Nos. 6,061,796 and 6,158,011. SSL acquired the two patents from V-One in 2005. From 2000 – 2003, before SSL acquired the two patents, Citrix licensed these patents from V-One.


The district court conducted a Markman hearing and a jury trial. The jury found: (1) Citrix willfully infringed claims 2, 4, and 7 of the '011 patent and the claims are valid; and (2) Citrix did not infringe claim 27 of the '796 patent. The district court denied: (3) SSL's motion for a new trial regarding the '796 patent; (4) Citrix's motion for JMOL and for a new trial regarding the '011 patent; and (5) SSL's request for prevailing party status. SSL appealed and Citrix cross-appealed.


An issue on appeal was whether the district court properly construed the term "destination address" in the '796 patent as "the network address of a computer or server." Based on the claim language and the written description of the patent, the Federal Circuit agreed with the district court's interpretation and affirmed its denial of SSL's motion for a new trial. Specifically, "the non-infringement verdict stands" because the "network address limitation is not practiced by the accused products."


In a patent case, Federal Circuit law governs the determination of which party has prevailed. 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party.") See also FRCP 54(d). A party has "prevailed" when it "received at least some relief on the merits," and when "that relief must materially alter the legal relationship between the parties by modifying one party's behavior in a way that 'directly benefits' the opposing party." The district court found that neither party prevailed because "both parties achieved some success and sustained some failure." The Federal Circuit disagreed and found that SSL is the prevailing party. SSL's judgment on the '011 patent against Citrix is a "relief on the merits that materially alters the legal relationship" of the parties, "even if it did not succeed on all of its infringement claims." Accordingly, the Federal Circuit vacated and remanded the district court's finding of no prevailing party.


With regards to Citrix's cross-appeal, the Federal Circuit affirmed the district court's ruling on all grounds. First, it found that "substantial evidence supports the jury's verdict of infringement" of the '011 patent. Citrix did not dispute the district court's claim interpretation of "encrypted files" as meaning "to render a set of data used by a program unintelligible without decrypting." Instead, it argued unsuccessfully that the jury's verdict is not supported by substantial evidence that it practices this limitation. Further, Citrix's JMOL motion for invalidity was appropriately denied because "Citrix did not show by clear and convincing evidence that the claims were invalid as obvious" over the cited reference.


The Federal Circuit also affirmed the district court's denial of Citrix's JMOL motion regarding willful infringement. The Federal Circuit determined that Citrix knew of the '011 patent, considered the patent in its agreements with V-One, and had access to the technology in the patent from V-One. The Federal Circuit also agreed with the district court that Citrix's non-infringement and invalidity arguments were unreasonable based on the substantial evidence in the record.


On evidentiary matters, the Federal Circuit affirmed the exclusion of Citrix's Chief Engineer's testimony at trial regarding his personal beliefs of non-infringement and invalidity based on a pending re-examination. The court found that "beliefs formed by a lay person without the benefit of the court's claim construction determinations rendered them of little probative value and potentially prejudicial." In addition, actions taken by the PTO have limited value to establish an infringer's good faith belief of invalidity. Furthermore, Citrix's effort to exclude the V-One agreements was rejected, because they were deemed to be "sufficiently probative of the circumstances which would surround a hypothetical negotiation to be admissible."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions