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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Friday
Jun172011

Federal Circuit Reverses District Court's Finding That Claim Terms Not Using "Means" Were Subject to § 112 ¶ 6

Inventio AG v. Thyssenkrupp Elevator Americas Corp. (Fed. Cir. June 15, 2011)

In this case, the Federal Circuit reversed the district court's finding that two claim terms, "modernizing device" and "computing unit", were terms subject to § 112 ¶ 6, that the written description of the patents in suit failed to disclose corresponding structure to perform the recited functions, and that the terms were therefore indefinite.  The patents in suit related to a modernized elevator system and a process for modernization that allowed elevator passengers to input desired destination floors when initially requesting an elevator.

The Federal Circuit began its analysis by explaining the "strong" presumption "not readily overcome" that claim terms not using the term "means" are not subject to § 112 ¶ 6.  Next, the Court settled a dispute between the parties concerning whether courts can consider the written description in making the initial determination of whether a claim term that does not use "means" is still subject to § 112 ¶ 6.  The Federal Circuit stated that "[c]laims are interpreted in light of the written description supporting them, and that is true whether or not the claim construction involves interpreting a 'means' clause."  The Federal Circuit went on to state that "[i]n cases where the claims do not recite the term 'means,' considering intrinsic and extrinsic evidence is usually helpful, as the litigated issue often reduces to whether skilled artisans, after reading the patent, would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming."

Concerning the term "modernizing device" the Court held that while prior cases found the term "device" was a generic structural term that "typically do[es] not connote sufficiently definite structure", in this case "the claims recite a 'modernizing device,' delineate the components that the modernizing device is connected to, describe how the modernizing interacts with those components, and describe the processing that the modernizing device performs.  The written descriptions additionally show that the modernizing device conveys structure to skilled artisans.  Thus, 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.'"  The Court therefore found that the defendant had failed to overcome the presumption that "modernizing device" is not a means-plus-function limitation.

Concerning the term "computing unit" the Court similarly found that "the inventor did not draft the claims in 'means for' format, and his 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.  [Defendant] had the burden to show that the 'computing unit' terms are so structurally devoid that we should rewrite them in means-plus-function format.  The claims and the written description, however, indicate that those of skill in the art would understand a computing unit to connote sufficiently definite structure.  Thus, on this record, [defendant] has failed to meet its burden."