October 17, 2014
On October 14, 2014, in Robert Bosch, LLC v. Snap-On Incorporated and Drew Technologies, Incorporated, the Court of Appeals for the Federal Circuit affirmed the Eastern District of Michigan’s holding that the claim terms “program recognition device” and “program loading device” are indefinite because they are means-plus-function elements with no corresponding structure disclosed in the specification.
The patent-in-suit was directed to a diagnostic tester for motor vehicles. The sole independent claim called for a “program recognition device” in which the version of the program in a programmable control unit in a motor vehicle is queried and recognized “by means of” the program recognition device. If the program is recognized and found not to be the latest and most current version, then a “program loading device” loads the most current version into the control unit. The specification of the patent did not contain any figures and did not provide a description of the program recognition device or the program loading device.
In initially determining whether the terms were means-plus-function elements, the district court held that the phrase “by means of” following “program recognition device” triggers a presumption that 35 U.S.C. 112, sixth paragraph (§ 112 ¶ 6) applies. The Federal Circuit disagreed and noted that in past Federal Circuit decisions, the presumption has applied when “means” is used as a noun, i.e., a “means” for doing something. The Federal Circuit further held that the district court’s error was harmless because the term “program recognition device,” as well as the term “program loading device,” fails to “provide sufficiently definite structure to one of skill in the art.”
In its analysis of whether the claim terms were means-plus-function terms, the Federal Circuit initially noted its previous decision in which it held that the word “device” was a non-structural “nonce” word and therefore a means-plus-function term. The Federal Circuit then found that while the specification of the patent-in-suit describes how the program recognition device functions, the specification does not describe the actual structure for the program recognition device, does not describe how it interacts with other parts of the system, and does not describe how it receives and processes signals. The Federal Circuit similarly found that the specification does not provide any “structural guidance” for the program loading device. The Federal Circuit was not persuaded by Bosch’s expert testimony that the claim terms were generally understood to have structural meanings in the art at the time of invention. The Federal Circuit stated, “[M]erely listing examples of possible structures is insufficient to avoid invocation of § 112, ¶ 6.”
Finding that there was no disclosure of corresponding structure in the specification for the claimed “program recognition device” and “program loading device,” the Federal Circuit held that the patent claims were indefinite and invalid under § 112, ¶ 6.
The Bosch decision can be seen as an addition to the list of Federal Circuit decisions that provide guidance on which claim terms are means-plus-function claim elements and therefore require disclosure of corresponding structure in the specification to be valid under § 112, ¶ 6.
For more information on this decision, please contact Fitch Even partner Karl R. Fink.
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