Tuesday, June 19, 2007

CAFC: Lack of Corresponding Structure Invalidates Means-Plus-Function Claim

Biomedino, LLC v. Waters Technologies Corp. (2006-1350) June 18, 2007

Biomedino appealed the judgment of the district court that claims 13-17 and 40 of U.S. Pat. No. 6,602,502 ("the ’502 patent") were invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2.

The claims recited "control means", but the only references in the specification to the "control means" are a box labeled "Control" in one figure and a statement that the regeneration process of the invention "may be controlled automatically by known differential pressure, valving and control equipment."

The CAFC distilled the issues down to the following:

Essentially this case asks the following question: for purposes of § 112, ¶ 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?
Even though one skilled in art could identify known methods, the CAFC concluded that some type of disclosed structure was required to meet § 112, ¶ 6:

In the present case, there is nothing to suggest a structure for the claimed control means. As we have previously explained, § 112, ¶ 6 requires some disclosure of structure in the specification corresponding to the claimed means. "[W]hile it is true that the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure." Default Proof, 412 F.3d at 1302; see also Atmel, 198 F.3d at 1382 ("There must be structure in the specification" and the requirements of § 112, ¶ 6 will not be met when there is "a total omission of structure.") . . .

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 . . . Accordingly, a bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring "corresponding structure, material, or acts described in the specification."


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