Means-plus-function claim must recite some structure, "known equipment" not enough

June 18, 2007
Post by Blog Staff

In a decision today, the Federal Circuit affirmed a district court's finding of invalidity of a several claims of a patent for indefiniteness under 35 U.S.C. § 112, ¶ 2. The patent specification did not describe a corresponding structure for the claim limitation "control means" as required by 35 U.S.C. § 112, ¶ 6, but instead stated that "known equipment" could be used. The court found that this was not sufficient to actually recite structure, and as a result claims incorporating this limitation were invalid for indefiniteness.More details of Biomedino, L.L.C. v. Waters Techs. Corp. after the jump.Two independent claims of the '502 patent were at issue in the appeal (relevant terms emphasized):

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.40. A closed regeneration device for separating a molecule bound substantially specifically to a binding species for reuse of said binding species, said regeneration device comprising a first reagent, a first valve selectively connecting said first reagent in fluid communication with said molecule bound to the binding species to separate said molecule from said binding species, a second reagent, a second valve selectively connecting said second reagent in fluid communication with said binding species to return said binding species to a regenerated condition, and control means for automatically operating said valves.

The district court construed the term "control means" in both claims 13 and 40 as a means plus function clause and therefore applied the requirements of § 112, ¶ 6. The district court ultimately concluded that the '502 patent did not disclose a structure which corresponded with the "control means" function, and thus held that the claims were invalid under § 112, ¶ 2.The Federal Circuit initially addressed Biomedino's argument that the recitation "control means" conveys sufficient structure to one of skill in the art such that § 112, ¶ 6 is not applicable. The court noted that use of the term "means" results in a presumption that the term was used by the inventor to invoke § 112, ¶ 6. The Federal Circuit agreed with the district court that because the term "control" simply described "means" and was not a structure which was capable of performing the recited function, Biomedino did not rebut the presumption that § 112, ¶ 6 applied.There was no dispute in the case that the claimed function of the limitation was "automatically operating said valving"/"automatically operating valves." The Federal Circuit stated that question before the court was essentially:

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?

In its analysis, the court noted that there was nothing present in the '502 specification which suggested or stated a structure for the "control means." Ultimately, the court stated that "[t]he 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". The Court held that "a bare statement that known techniques or methods can be used does not disclose structure," and the claims were invalid as indefinite because the specification did not disclose such structure.To read the full decision in Biomedino, L.L.C. v. Waters Techs. Corp., click here.

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