Most patent litigators are familiar with means-plus-function claims, which are defined by 35 U.S.C. § 112(f) (previously § 112 ¶ 6). They allow a patentee to write a claim limitation as a "means" or "step" for performing a function, which is performed by the corresponding structure (or material, or acts) within the specification.
Section 112 ¶ 6 can be a gold mine for accused infringers. If they successfully argue that a claim element falls under § 112 ¶ 6, they can then argue invalidity based on a lack of corresponding structure, or they can argue non-infringement if there is structure but their products lack any equivalent. Patentees usually don't want to construe their claims as § 112 ¶ 6 claims, for the corresponding reasons.
If a claim element includes "means," there is a rebuttable presumption that it is a means-plus-function claim element under § 112 ¶ 6; if it lacks "means," there is a rebuttable presumption that it is not a means-plus-function element. Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291, 1297-98 (Fed. Cir. 2018).
Overcoming the presumption requires showing that the terms have—or lack—a "sufficiently definite meaning as the name for structure" to a person of skill in the art. Id.
Accused infringers sometimes assume that they should have an easy time convincing the Court that a "means" element is governed by § 112 ¶ 6—or that they won't have to fight the issue at all. But that's not always the case.
Judge Stark Rejects § 112 ¶ 6 for Two "Means" Elements
An opinion yesterday from Judge Andrews serves as a good reminder of why it is not safe to assume that a "means" claim element will get § 112 ¶ 6 treatment.
That case involves two "means" elements:
10. A system for use in controlling a vehicle at a vehicle speed, said system including:
. . .
a controller in communication with said adaptive cruise control system and capable of determining when the vehicle is in a turn . . .
at least one object detection sensor for detecting an object in a vehicle path . . . .
11. The system of claim 10 wherein said object detection sensor includes means for generating . . . an object range signal . . .
12. The system of claim 11 wherein said controller includes both means for measuring an object range rate . . . , and means for determining a curvature . . .
The Court found that neither one of the "means" elements is a § 112 ¶ 6 means-plus-function element. It found that both of the elements modified other terms—"object detection sensor" or "controller"—each of which had a sufficiently definite structure that it could not be a means-plus-function term.
As to "object detection sensor," Judge Andrews relied first on extrinsic evidence:
Plaintiffs evidence shows that an object detection sensor was a well-known structure in the field of adaptive cruise control for automobiles at the time of invention. (See D .I. 88 at Appxl6-18). For example, engineering texts contemporaneous with the '416 patent's priority date define sensors as physical "devices." (See, e.g., id at Appxl 17, Oxford Essential Dictionary (2003) (defining "sensor" as a "device for the detection or measurement of a physical property to which it responds" ); Appx121, The Oxford American Dictionary and Thesaurus (2003) (defining "sensor" as "a device giving a signal for the detection or measurement of a physical property to which it responds" )).
He also noted that the specification treated it as a physical device.
The Court rejected the argument that the claim failed to describe the sub-element or part of the "object detection sensor" that performed the function, and held that it was not a means-plus-function limitation:
Defendants argue that claim 11 fails to recite a sufficient structure as it does not identify the sub-component within the object detection sensor that performs the claimed function. . . . I do not think the Federal Circuit requires this level of specificity. The Court just requires that the claim recites a structure that performs the claimed function, which here is the object detection sensor. . . . Thus, I find that the "means for generating" term in claim 11 is not a means-plus-function limitation, as claim 11 recites a sufficiently definite structure for performing the claimed function-object detection sensor.
For "controller," Judge Andrews again relied primarily on extrinsic evidence, and then noted that the specification was consistent, and again held that it was not a means-plus-function element:
Plaintiff's expert . . . explains [that] "A controller is a device that evaluates incoming signals, using logic to make a decision about those signals, and transmits one or more outputs.". . . Plaintiffs evidence supports the finding that a controller was a well-known physical structure in the art. . . . For example, engineering texts contemporaneous with the '416 patent's priority date show that persons of skill in the art generally understood a controller to be a physical structure. . . . The '416 specification also treats the controller as a physical structure and ties it to the claimed functionality. . . . Thus, I find that the "means for measuring" and "means for determining" terms in claim 12 are not means-plus-function limitations, as claim 12 recites a sufficiently definite structure for performing the claim's functions-the controller.
The Court is often hesitant to rely on extrinsic evidence in a claim construction context, particularly to narrow a claim element. It is interesting that it seems more comfortable relying on extrinsic evidence for this kind of evidence for a § 112 ¶ 6 determination.
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