Chinta & Fratangelo LLP

Means-plus-function claims – indefinite because of insufficient structure in the specification

Contact the author: Andrew Berks

Robert Bosch, LLC v. Snap-On, Inc., No. 2014-1040 (Fed. Cir. 10/14/2014).

The Federal Circuit panel, (Prost, Taranto, and Hughes) outlines a two-step framework for determining if a claim invokes 35 U.S.C. § 112(f) (formerly (formerly 112 ¶ 6). The panel concludes the challenged claim invoked 35 U.S.C. § 112(f), i.e., the claim is a means-plus-function (MPF) claim. The court then concluded that the challenged claim was indefinite.

First, a claim is presumed drafted in a means-plus-function format if it contains the word “means,” Bosch at 4, citing EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955, 958 (Fed. Cir. 2014). However, the word “means” is not mandatory to trigger this presumption if the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. Id., quotes omitted.

Second, the court should construe the disputed claim term by identifying the corresponding structure, material, or acts described in the specification to which the claim term will be limited. Bosch at 5, citing Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008).

If the court is unable to identify any corresponding structure, material, or acts described in the specification, the claim term is indefinite. Bosch at 5, citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).

Holdings: In Bosch,

a.  The disputed claim was not presumed to be an MPF claim, even though the word “means” is in the claim.

b.  However, the court nevertheless construes the disputed claim as an MPF claim.  The disputed claim did not overcome the presumption against concluding that the claim as an MPF claim, because the claim language did not recite sufficient structure to avoid § 112(f), so the court concludes the claim invokes § 112(f).

c.   The panel then concludes that the claim terms “program recognition device” and “program loading device” were indefinite, because there was no guidance in the specification about structures corresponding to these claims terms. Further, since these terms are found in the only independent claim of the ’313 patent, all claims in the ’313 patent are invalid.

Andrew Berks 10/27/2014

Link to this post:

Original case cite: