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Claim Terms Held Are Not Means-Plus-Function Limitations When Claim Language, in View of Written Description, Recites Sufficiently Definite Structure

June 15, 2011

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Last Month at the Federal Circuit - July 2011

Judges: Lourie (author), Prost, Moore

[Appealed from: D. Del., Judge Robreno]

In Inventio AG v. ThyssenKrupp Elevator Americas Corp., No. 10-1525 (Fed. Cir. June 15, 2011), the Federal Circuit reversed and remanded the district court’s grant of SJ of invalidity based on a determination that certain claim limitations were means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6 and were indefinite for lack of disclosure of corresponding structure.

Inventio AG (“Inventio”) sued ThyssenKrupp Elevator Americas Corporation, ThyssenKrupp Elevator Corporation, and ThyssenKrupp Elevator Manufacturing Incorporated (collectively “ThyssenKrupp”) for infringement of U.S. Patent Nos. 6,892,861 (“the ’861 patent”) and 6,935,465 (“the ’465 patent”). The patents are directed to a modernized elevator system that allows a passenger at the boarding floor to enter the desired destination when requesting an elevator instead of just pressing an up or down arrow. The patents also disclose a process for modernization that replaces the original floor call transmitters (the “up/down” buttons) with new floor terminals incorporating the modernized elevator system. In addition, the patents disclose the back-end technology (“modernizing device” and “computing unit”) that interfaces with both the new floor terminals and the conventional elevator control to operate the modernized elevator system. Specifically, the written descriptions show how the “computing unit” and the internal components of the “modernizing device” are connected to each other and to the elevator control, and how the modernized elevator system functions during operation. During claim construction, the district court concluded that the terms “modernizing device” and “computing unit” were indefinite. In reaching this conclusion, the district court concluded that both terms lacked sufficiently definite structure to avoid 35 U.S.C. § 112, ¶ 6.

On appeal, the Federal Circuit first explained that the word “means” is central to the means-plus-function claim analysis. First, “[t]he use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term.” Slip op. at 9 (citing TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008)). “Conversely, where, as here, the claim language does not recite the term ‘means,’ [the Court] presume[s] that the limitation does not invoke § 112, ¶ 6.” Id. (quoting Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04 (Fed. Cir. 1998)). The Court further explained that the presumption flowing from the absence of the term “means” can be rebutted if the challenger demonstrates that the claim term either “fails to ‘recite sufficiently definite structure’ or recites ‘function without reciting sufficient structure for performing that function.’” Id. (quoting CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)).

The parties disagreed as to whether the determination of “sufficiently definite structure” focused on the claim language in isolation or on the claim language in light of the written description. ThyssenKrupp argued that the “sufficiently definite structure” analysis depends on whether the claim language “specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 10 (quoting TriMed, 514 F.3d at 1259-60). Inventio, on the other hand, argued that the Court should consider the intrinsic record to determine if a claim term that lacks the word “means” is subject to § 112, ¶ 6.

The Federal Circuit agreed with Inventio, holding that “it is proper to consult the intrinsic record, including the written description, when determining if a challenger has rebutted the presumption that a claim lacking the term ‘means’ recites sufficiently definite structure.” Id. at 12. The Court rejected ThyssenKrupp’s reading of TriMed because “TriMed does not preclude consideration of the written description, prosecution history, and extrinsic evidence . . . .” Id. Relying on Personalized Media, 161 F.3d at 704, the Court explained that the presumption can be rebutted if the evidence intrinsic and any relevant extrinsic evidence warrant, and noted that “considering intrinsic and extrinsic evidence is usually helpful.” Slip op. at 11 (citing MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)).

Because the Court looks to the words of the claims themselves, the written description, the prosecution history, and relevant extrinsic evidence to determine the proper scope of a claim, the Court agreed with Inventio that the terms “modernizing device” and “computing unit” presumptively connote sufficiently definite structure to those of skill in the art, and that ThyssenKrupp had not carried its burden of overcoming this strong presumption. Id. at 13, 16. In so doing, the Court rejected ThyssenKrupp’s reliance on dicta in Personalized Media and MIT that the term “device” is a generic structural term that typically does not connote sufficiently definite structure. The Court instead referenced Linear Technology Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004), in which a claimed “circuit,” coupled with a description of the circuit’s operation in the claims, connoted sufficiently definite structure to skilled artisans to avoid the application of § 112, ¶ 6. Slip op. at 13. The Court found that, similar to the claims in Linear, Inventio’s claims describe how the “modernizing device” functions as an electrical circuit that receives signals, processes signals, and outputs signals to other components in the patented system. The Court also found that written descriptions depict the modernizing device and its internal components, and show how the elements are connected to the elevator control and computing unit components of the elevator system, thereby conveying structure. Thus, the Court concluded that “this is not a case where a claim nakedly recites a ‘device’ and the written description fails to place clear structural limitations on the ‘device.’” Id. at 15.

The Court also rejected ThyssenKrupp’s reliance on Brown v. Baylor Healthcare System, 381 F. App’x 981, 983-84 (Fed. Cir. 2010), for its argument that a claimed computer is not sufficient structure to perform the claimed functions as a matter of law. The Court explained that “Brown did not hold, as a matter of law, that a claimed ‘computer’ is not sufficiently definite structure to avoid the application of § 112, ¶ 6,” and that “whether claim language invokes § 112, ¶ 6 depends on how those skilled in the art would understand the structural significance of that claim language, assessed against the presumptions that flow from a drafter’s choice to employ or not employ the term ‘means.’” Slip op. at 18.

The Court concluded that, unlike the claims in Brown, Inventio’s claims describe how the computing unit is connected to the modernizing device and the floor terminals of the elevator system, and while the written description refers to the computing unit as a computer, it thoroughly explains the steps that a computer program product would execute. Furthermore, as claims are not drafted in “means for” format, the Court found that the inventor’s decision to avoid the term “means” raises a strong presumption that the claimed “computing unit” connotes sufficiently definite structure to those skilled in the art. Id. Thus, the Court concluded that ThyssenKrupp failed to meet its burden of showing the claims are structurally devoid. Accordingly, the Federal Circuit reversed the district court’s SJ determination that the claimed “modernizing device” and “computing unit” limitations were means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6, and remanded for further proceedings.