The U.S. Court of Appeals for the Federal Circuit held that claims with a means plus function limitation – here a “control means” — where there is no corresponding structure described in the specification, are invalid. See, Biomedino, LLC v. Waters Technologies Corporation (2006-1350).

Biomedino, LLC had appealed from a lower court decision that claims 13-17 and 40 of U.S. Pat. No. 6,602,502 are invalid for indefiniteness under 35 U.S.C. § 112 para. 2.

Essentially this case asks the question: for purposes of § 112 para 6, is sufficient corresponding structure disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggest that known methods and equipment exist?

The court concluded that the 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.

Section 112, 6 of Title 35 of the United States Code permits an applicant to express a claim limitation as a means or step for performing a specified function without claiming the structure that performs the function:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In Valmont Industries, Inc. v. Reinke Manufacturing Co., the Federal Circuit held that § 112, 6 permitted “broad means-plus-function language, but provided a standard to make the broad claim language more definite[: ] . . . [t]he applicant must describe in the patent specification some structure which performs the specified function.” 983 F.2d 1039, 1543 (Fed. Cir. 1993).

The claim at issue is:

13. A device comprising a passage; binding means in said device for binding a species substantially specifically, said binding means being in fluid communication with said passage; exposure means in said device for exposing said species to said binding means and for preventing said binding means from leaving said device; closed regeneration means for separating said species from said binding means for reuse of said binding means in said device; valving for selectively connecting said closed regeneration means in fluid communication with said binding means, and control means for automatically operating said valving.

The district court held that if a claim element contains the term “means” and recites a function, there is a presumption that § 112, 6 applies. After deciding that the word “control” did not identify any structure in particular, the district court looked to the specification. However, the only references in the specification to the “control means” are a box labeled “Control” in Figure 6 and a statement that the regeneration process of the invention “may be controlled automatically by known differential pressure, valving and control equipment.”

From this, the district court concluded:

The specification says nothing more than that unspecified equipment may be used to control the regeneration process. The fact that one skilled in the art could envision various types of equipment capable of automatically operating valves does not change the fact that no structure capable of performing that function was disclosed by the inventor.

Therefore, the court held that “[t]he failure to disclose a structure corresponding to the ‘control means’ function makes claims 13-17 and claim 40 of indefinite scope in violation of § 112, 2 of the Patent Act.”

Biomedino argued that use of the term “control” to describe “means” takes the phrase “control means” outside of § 112, 6 asserting that “control means” recites sufficient structure on its own such that it obviates the need for § 112, 6. Basically, Biomedino argued that a “control” is a precise structure well understood by those of skill in the art, and thus, the word “means” in claims 13 and 40 can be ignored. Additionally, Biomedino tried to argue that “control” is analogous to the term “controller” and conveys, to one skilled in the art, structure for controlling the valves and other equipment.

Unfortunately, the Federal Circuit just wasn’t buying their revisionist history. The Court went against the patentee stating that:

When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112, 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1367, 1375 (Fed. Cir. 2003). “This presumption can be rebutted when the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety.” Id. Claims 13 and 40 recite no such structure. As the district court noted, the “reference to ‘control’ is simply an adjective describing ‘means:’ [sic] it is not a structure or material capable of performing the identified function.” Biomedino, slip op. at 12. We agree with the district court and hold that Biomedino has not rebutted the presumption that § 112, 6 applies to “control means.”

Once a court concludes that a claim limitation is a means-plus-function limitation, two steps of claim construction remain: 1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function. Med. Instrumentation, 344 F.3d 1205 at 1210. If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite. See Atmel, 198 F.3d at 1378-79 (citing In re Donaldson, 16 F.3d at 1195).

The court did throw patentees a bone stating that:

While the specification must contain structure linked to claimed means, this is not a high bar: “[a]ll one needs to do in order to obtain the benefit of [§ 112, 6] is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of [§ 112,] 2.” Atmel, 198 F.3d at 1382. Additionally, interpretation of what is disclosed in the specification must be made in light of the knowledge of one skilled in the art. Id. at 1380.

See the entire opinion here: Biomedino CAFC Opinion

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