The U S. Court of Appeals for the Federal Circuit has now held a claim to be invalid as indefinite where the patent specification failed to disclose corresponding structure for a "means-plus-function" claim element, even though the patent specification disclosed that the stated function may be accomplished by "known … equipment." Biomedino, LLC v. Waters Technologies Corp., Case No. 06-1350, (Fed. Cir., June 18, 2006) (Archer, Sr. J.).
Biomedino’s patent generally relates to methods and devices for determining the presence of psychoactive drugs in biologic samples, e.g., blood. The device claims at issue recited "valving" and "control means for automatically operating said valving." The specification contained a figure having box labeled "Control," and the written description taught that the regeneration process may be "controlled automatically by known different pressure, valving and control equipment."
After finding that the term "control means" was a means-plus-function limitation subject to §112, ¶6, the district court held that the claims containing this limitation were indefinite because the specification did not recite corresponding structure. Biomedino appealed.
The Federal Circuit affirmed, agreeing with the district court that the claimed "control means" was a means-plus-function limitation. The Court then inquired as to whether "sufficient corresponding structure" is disclosed where the specification simply states that a claimed function can be performed by known methods or using known equipment and where the prior art of record and the testimony of experts suggest that known methods and equipment in fact exist.
In answering "no," the Court noted that for claim limitations subject to § 112, ¶6, "[t]he inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure." As such, "a bare statement that known techniques or methods can be used does not disclose structure."
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