Opinion
No. 3:22-cv-00010-RGE-SBJ
2023-11-07
Richard GRAMM and Reaper Solutions LLC, f/k/a Headsight, Inc., Plaintiffs, v. DEERE & COMPANY, Defendant.
Glenn L. Johnson, McKee Voorhees & Sease PLC, Des Moines, IA, Christopher A. Young, Pro Hac Vice, John A. Cotter, Pro Hac Vice, Thomas John Oppold, Pro Hac Vice, Larkin Hoffman Law Firm, Minneapolis, MN, for Plaintiffs. Wesley T. Graham, Duncan Green PC, Des Moines, IA, Jeffry M. Nichols, Pro Hac Vice, Judy He, Pro Hac Vice, Laura Lydigsen, Pro Hac Vice, Crowell & Moring LLP, Chicago, IL, for Defendant.
Glenn L. Johnson, McKee Voorhees & Sease PLC, Des Moines, IA, Christopher A. Young, Pro Hac Vice, John A. Cotter, Pro Hac Vice, Thomas John Oppold, Pro
Hac Vice, Larkin Hoffman Law Firm, Minneapolis, MN, for Plaintiffs.
Wesley T. Graham, Duncan Green PC, Des Moines, IA, Jeffry M. Nichols, Pro Hac Vice, Judy He, Pro Hac Vice, Laura Lydigsen, Pro Hac Vice, Crowell & Moring LLP, Chicago, IL, for Defendant.
ORDER ON CLAIM CONSTRUCTION
Rebecca Goodgame Ebinger, United States District Judge.
I. INTRODUCTION
Plaintiffs Richard Gramm and Reaper Solutions LLC, formerly known as Headsight, Inc., assert United States Patent number 6,202,395 in a patent infringement action against Defendant Deere & Company. Am. Compl. 7, ECF No. 7. The '395 Patent is directed to an apparatus for detecting and controlling the height above the soil of an agricultural machine. U.S. Patent No. 6,202,395, at [57] (filed Dec. 31, 1998) (issued Mar. 20, 2001). The parties request construction of seven disputed claim terms used in the '395 Patent. Suppl. Joint Claim Construction Statement 3-42, ECF No. 220. The Court finds claim 12 of the '395 Patent invalid as indefinite due to the term "control means." The Court does not reach construction of the remaining terms.
II. BACKGROUND
A. Background on the '395 Patent and Disputed Terms
The '395 Patent discloses an "apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field." '395 Patent col. 1 ll. 11-13. Specifically, the apparatus is designed to maintain the designated height of a crop header used in harvesting. Id. at col. 1 ll. 18-22, col. 8 ll. 22-24. Precise height control is necessary to avoid a height that is too high—causing the header to miss downed plants—and to avoid a height that is too low—causing damage to the header due to contact with the soil or other obstructions in the field. Id. at col. 1 ll. 23-29. The disclosed apparatus detects and controls header height through the operation of a sensor attached to the leading portion of the header. Id. at col. 3 ll. 24-26; id. at col. 3 ll. 31-33 (citing id. at fig. 1, item 14). An embodiment of the sensor is shown as item 14 of Figure 1. The parties ask the Court to resolve their disputes as to the construction of seven terms used in the '395 Patent: 1) "first end," 2) "linear," 3) "generally linear," 4) "flexible," 5) "second rotation stop means," 6) "biasing means," and 7) "control means." ECF No. 220 at 3-42. All of these terms are used in claim 12 of the '395 Patent, except for "second rotation stop means," which is used in claim 20, and "linear," which is used in claim 25. '395 Patent at col. 8 ll. 22-61, col. 9 ll. 17-21, 25-27, 42-43. Further, "flexible" is used in claim 18 in addition to claim 12. Id. at col. 9 ll. 17-21. Claims 18, 20, and 25 are each dependent on claim 12. Id. at col. 9 ll. 15, 25, 42. Claim 12 claims the following:
Apparatus for maintaining a non-cut crop header in a crop harvester a designated height above the soil as the crop harvester traverses a field, said apparatus comprising:
a generally linear arm coupled to the header and having first and second opposed ends, wherein the first end of said arm engages and is displaced over the soil as the header moves above the soil;
angular deflection sensing means coupled to the second end of said arm for measuring a deflection of said arm when the first end of said arm encounters irregularities in the soil as the header moves above the soil and for providing a first signal representing the extent of deflection of said arm;
biasing means for urging said arm to a selected inclined orientation relative to vertical, wherein said arm in said selected inclined orientation extends below and aft of said angular deflection sensing means as the crop harvester moves in a forward direction, said biasing means allowing for forward displacement of the first end of said arm beyond vertical when the crop harvester is moved rearwardly while the first end of said arm engages the soil without damaging said arm, with said biasing means again urging said aim to said selected inclined orientation when the crop harvester is again moved in the forward direction or when the second end of said arm is removed from contact with the soil; and
control means coupled to said header and said angular deflection sensing means and responsive to said first signal for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil, wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine and said head housing is comprised of polyurethane and includes a metal tip and a mounting bracket for attaching said metal tip to a forward end of said head housing, and wherein said mounting bracket further couples said flexible arm to a forward end of said head housing.
Id. at col. 8 ll. 22-61 (emphasis added).
B. Procedural Background
Plaintiffs initiated this action in March 2014 in the United States District Court for the Northern District of Indiana. Compl., ECF No. 1. Deere & Co. subsequently petitioned the United States Patent Trial and Appeal Board for inter partes review of the '395 Patent. Def.'s Mot. Stay Pending Inter Partes Review 1, ECF No. 62. In September 2015, responding to Deere & Co.'s petition, the Board instituted inter partes review of the '395 Patent. Order Granting Mot. Stay 2, ECF No. 95. In October 2015, Deere & Co.
moved to stay Plaintiffs' infringement case pending the inter partes review. Id. The Northern District of Indiana granted this motion in September 2016. Id. at 8. Ultimately, the Patent Board held claims 1-11 and 27-34 unpatentable as obvious but further held claims 12-26 were not proven unpatentable as obvious. See Deere & Co. v. Gramm, 842 F. App'x 628, 631 (Fed. Cir. 2021) (unpublished). The Federal Circuit affirmed these holdings. Id. at 631, 635. Of the remaining claims, Plaintiffs now assert only six: claims 12, 18, 20-22, and 25 (the "Asserted Claims"). Pls.' Opening Claim Construction Br. 1, ECF No. 198. On April 2, 2021, Deere & Co. moved to dismiss for improper venue or to transfer venue, and the Northern District of Indiana granted transfer to the Southern District of Iowa. Mot. Dismiss or Transfer Venue, ECF No. 124; Order Transferring Case, ECF No. 156. The case was transferred to this district in February 2022. ECF No. 156 at 14.
The parties subsequently submitted their opening claim construction briefs and rebuttal briefs, asking the Court to resolve their disputes as to the construction of the seven terms discussed above. ECF No. 198; Def.'s Opening Claim Construction Br., ECF No. 199; Pls.' Rebuttal Claim Construction Br., ECF No. 214; Def.'s Rebuttal Claim Construction Br., ECF No. 215. On March 9, 2023, the Court held a Markman hearing on the seven disputed terms. Markman Hr'g Mins., ECF No. 221; see Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (finding "the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim"), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Attorneys John Cotter, Christopher Young, Thomas Oppold, and Glenn Johnson appeared for Plaintiffs. ECF No. 221. Attorneys Wesley Graham, Judy He, and Jeffry Nichols appeared for Defendants. Id.
Additional facts are set forth below as necessary.
III. LEGAL STANDARD
A. Claim Construction
"A determination of patent infringement requires a two-step analysis. The court must first interpret the claim and determine the scope and the meaning of the asserted patent claims, and then compare the properly construed claims to the allegedly infringing device." Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1367 (Fed. Cir. 2004). "[C]laim construction" is the first of these two steps. Id. "[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (citations omitted). The construction of the terms of the patent is a matter "exclusively within the province of the court." Markman, 517 U.S. at 372, 116 S.Ct. 1384. "When the parties raise an actual dispute regarding the proper scope of these [patent] claims, the court, not the jury, must resolve that dispute." 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citation omitted).
B. Indefiniteness
The requirement of definiteness is a statutory requirement. "The Patent Act requires that a patent specification 'conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.'" Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014) (alteration and emphasis in original) (quoting
35 U.S.C. § 112(b)). The Act also "requires inventors to claim their invention in 'full, clear, concise, and exact terms.'" One-E-Way, Inc. v. Int'l Trade Comm'n, 859 F.3d 1059, 1062 (Fed. Cir. 2017) (quoting 35 U.S.C. § 112(a)). These statutory obligations have been read to impose a "definiteness requirement" for patent claims. See id. at 1062-63; accord Nautilus, 572 U.S. at 910, 134 S.Ct. 2120. As defined by the Supreme Court, patent claims satisfy the "definiteness requirement" when the "claims, viewed in light of the specification and prosecution history, inform[s] those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, 572 U.S. at 910, 134 S.Ct. 2120. "The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable." Id. Failing this requirement, an indefinite claim is invalid. Id. at 902, 134 S.Ct. 2120. Because patents are statutorily presumed valid and a finding of indefiniteness renders a patent claim invalid, any facts supporting a holding of indefiniteness must be proved by clear and convincing evidence. See Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001) ("[A]ny facts supporting a holding of invalidity must be proved by clear and convincing evidence." (citations omitted)). Ultimately, however, "indefiniteness is a question of law and in effect part of claim construction." ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
In 2011 the America Invents Act added letters to the paragraphs of 35 U.S.C. § 112. See Leahy-Smith America Invents Act of 2011, Pub. L. 112-29, 125 Stat. 284, 296 (2011). See generally Edward E. Manzo, Patent Claim Construction in the Federal Circuit, Ch. 3.VI (2022 ed.) ("What has been known as § 112, ¶ 6 is now properly cited as § 112(f)."). For clarity and consistency within this Order, quotations citing to § 112 as codified prior to 2011 are modified to include lettered paragraphs —for example, citations to § 112 ¶ 6 are modified to read "§ 112[(f)]."
C. Means-Plus-Function Terms
Title 35 United States Code § 112(f) provides:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112(f). "In enacting this provision, Congress struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed." Williamson v. Citrix Online, L.L.C., 792 F.3d 1339, 1347 (Fed. Cir. 2015). Specifically, a claim term within the purview of this statute is to be constructed as covering "only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof." Id. (emphasis added).
"Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function." Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005) (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880-81 (Fed. Cir. 2000)). When determining whether a claim is a means-plus-function term and thus subject to § 112(f), a pair of rebuttable presumptions apply. First, "the use of the word 'means' in a claim element creates a rebuttable presumption that § 112[(f)] applies." Williamson, 792 F.3d at 1348 (citation omitted). Conversely, "the failure to use the
word 'means' also creates a rebuttable presumption —this time that § 112[(f)] does not apply." Id. When stating these presumptions, the Federal Circuit recognized "the essential inquiry is not merely the presence or absence of the word 'means' but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id. (citation omitted). "When a claim term lacks the word 'means,' the presumption can be overcome and § 112[(f)] will apply if the challenger demonstrates that the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.'" Id. at 1349 (quoting Watts, 232 F.3d at 880).
When courts find § 112(f) does apply, "[c]onstruing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function." Id. at 1351 (internal citations omitted). "Structure disclosed in the specification qualifies as corresponding structure if the intrinsic evidence clearly links or associates that structure to the function recited by the claim." XR Commc'ns, LLC v. ARRIS Sols., Inc., Nos. 2022-1125, 2022-1141, 2023 WL 3529830, at *3 (Fed. Cir. May 18, 2023) (emphasis in original) (quoting Williamson, 792 F.3d at 1352). "If the specification fails to disclose adequate corresponding structure to perform the claimed function, the claim is indefinite." Id. (citing Traxcell Techs., LLC v. Sprint Commc'ns Co., 15 F.4th 1121, 1134 (Fed. Cir. 2021)).
IV. ANALYSIS
The parties dispute the proper construction of seven terms: 1) "first end," 2) "linear" 3) "generally linear," 4) "flexible," 5) "second rotation stop means," 6) "biasing means," and 7) "control means." ECF No. 220 at 3-42. See generally ECF Nos. 198, 199, 214, 215. As to the first two terms, Deere & Co. proposes an affirmative construction whereas Plaintiffs assert the plain and ordinary meaning applies. ECF No. 198 at 9-12; ECF No. 199 at 5-6, 11-12. As to the fourth and fifth terms, the parties defend competing affirmative constructions. ECF No. 198 at 12-16, 34-35; ECF No. 199 at 6-8, 13-14. As to the remaining terms, Plaintiffs propose a construction, but Deere argues the terms are indefinite. ECF No. 198 at 16-34; ECF No. 199 at 17-35. The Court finds the term "control means" is indefinite, rendering claim 12 indefinite. Because all other disputed claim terms appear in claim 12 or in claims dependent on claim 12, the Court does not reach construction of the remaining terms at this time.
Plaintiffs urge the Court to delay ruling on indefiniteness until summary judgment, but they do not argue that any evidence they would like to enter into the record is not already available. See ECF No. 214 at 2-4. This case has been pending since 2014 and was stayed for years during inter partes review. See supra Part II.B. There is no reason to not rule on indefiniteness now. ePlus, Inc., 700 F.3d at 517 ("[I]ndefiniteness is a question of law and in effect part of claim construction.").
The parties agree "control means" is a means-plus-function term. ECF No. 198 at 27; ECF No. 199 at 28. Plaintiffs contend the structure corresponding with the claimed "control means" is the "'controller interface 18,' 'head controller 20,' and 'hydraulic control system 38.'" ECF No. 198 at 28. Although Deere & Co. accepts this proposition, it argues the scope of "control means" is not reasonably certain under 35 U.S.C. § 112 because the '395 Patent's specification does not adequately describe the structure of the "head controller." See
ECF No. 199 at 28-33. Deere & Co. first argues the reference to a "head controller" fails to identify adequate structure because the specification is not sufficiently clear about which commercially available head controller it seeks to identify. Id. at 28-31 Second, it argues that even if "head controller" adequately identifies a specific commercially available structure, the structure referenced amounts to a general-purpose computer or microprocessor, so the specification must disclose an algorithm to provide sufficient structure under § 112. ECF No. 215 at 27-29. Last, Deere & Co. argues the '395 Patent's specification fails to disclose an algorithm. Id. at 29-34; ECF No. 199 at 31-33. Plaintiffs resist each of these three arguments. See ECF No. 198 at 29-34, ECF No. 214 at 27-32. The Court addresses each dispute in turn.
A. "Head Controller" Adequately Identifies a Specific Commercially Available Structure
Seeking a finding that claim 12 is indefinite, Deere & Co. argues the "head controller" referenced in the '395 Patent's specification could refer to "at least two or three Deere controllers" used as of the priority date of the patent in December 1997. See ECF No. 215 at 25. According to Deere & Co., this renders the disclosed structure insufficiently specific, and "[a]s a result, 'control means' is indefinite." Id. If the specification fails to disclose adequate corresponding structure to perform the claimed function, the claim is indefinite. See Williamson, 792 F.3d at 1352. The Federal Circuit has counseled, however, that "[w]hile the specification must contain structure linked to claimed means, this is not a high bar: '[a]ll one needs to do in order to obtain the benefit of [§ 112(f)] is to recite some structure corresponding to the means.'" Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007) (second alteration in original) (quoting Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999)). Reference to a generic structure, such as a "controller," may describe sufficient structure if the generic description would provide "adequate defining structure to render the bounds of the claim understandable to an ordinary artisan." Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010) (citation omitted) (finding "the circuitry at a controller" to be sufficient structure even though the specification did not detail the inner circuitry of the controller); see also Budde, 250 F.3d at 1382 (Fed. Cir. 2001) (finding there was not clear and convincing evidence that the reference to a "commercially available" vacuum sensor failed to disclose sufficient structure).
The structure at issue here is the "[h]ead controller 20 [that] is conventional in design and operation" and works with "the control interface 18" and "an electrically actuated, hydraulic control system 38," '395 Patent at col. 3 ll. 33-52, to carry out the claimed function of "raising and lowering the header in accordance with said first signal in maintaining the header a designated height above the soil." See id. at col. 3 ll. 33-52, col. 8 ll. 49-53; see also ECF No. 198 at 27-28. The specification explains the head controller responds to the "detected height of the corn header" transmitted by "an analog electrical signal from the controller interface 18 and out-puts an analog signal to the hydraulic control system 38" "for controlling the lateral position of the corn header 12 as well as its height above the ground, or soil, 16." See '395 Patent at col. 3 ll. 36-45. In addition to explaining the controller is "conventional in design and operation," the specification also explains "[i]n a specific embodiment of the present invention, head controller 20 is as incorporated in a Deere
combine." Id. at col. 3 ll. 42-43, 49-51. Figure 1 is the only figure depicting these components. Id. at fig. 1.
Image materials not available for display.
The record indicates the conventional header referenced, as incorporated in a Deere combine, at least refers to the Deere "Dial-A-Matic head controller" Version #2. The experts of both parties state a person of ordinary skill in the art as of the priority date of the '395 Patent would have recognized the Dial-A-Matic Version #2 as a head controller "conventional in design and operation" incorporated into Deere combines. Smith Decl. ¶ 18, Pls.' Ex. 28 Supp. Opening Claim Construction Br. at 423, ECF No. 198-3; Miller Decl. ¶ 9, Def.'s Ex. 21 Supp. Opening Claim Construction Br. at 4-5, ECF No. 200. The record indicates the Dial-A-Matic Version #1 controller would not be understood as within the scope of the conventional controllers referenced because the specification clearly indicates "head controller 20 provides suitable electrical control signals to an electrically actuated, hydraulic control system 38 for controlling the lateral position of the corn header 12." '395 Patent at col. 3 ll. 37-40. Dial-A-Matic Version #1 lacks this capacity, whereas Version #2 does not. See Miller Decl. ¶¶ 8-9, ECF No. 200 at 4-5.
Deere & Co. argues the specification's reference to Deere head controllers could also refer to the Dial-A-Matic Version #3 in addition to Version #2, thereby rendering the disclosed structure insufficiently specific. ECF No. 215 at 25-26 (citing Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012)). Deere & Co.'s argument is not persuasive. In Ergo Licensing, the court found the reference to the generic structure of a "control device" did not disclose sufficient structure because an expert had explained "there were at least three different types of control devices commonly available and used at the time to control adjusting means: microprocessors, discrete circuits connected to stepper motors, and analog circuits." 673 F.3d at 1364. The court also noted "'control device' provides no more structure than the term 'control means' itself." Id. Due to these factors, the court concluded the specification failed to disclose any structure, and the fact that a skilled artisan may be aware of multiple structures that could be implemented did not remedy this lack of disclosure of structure. Id. This case is different. The specification
does not refer only to a "control device"; rather, it references a specific company's controllers with specified capacities —including the capacity for lateral positioning —only two versions of which were commercially available at the time of the priority date. See '395 Patent at col. 3 ll. 33-45; see also Miller Decl. ¶ 9, ECF No. 200 at 4-5; Smith Decl. ¶ 18, ECF No. 198-3 at 423. These facts are distinct from those in Ergo Licensing because the specification more directly references specific commercially available structures. Cf. 673 F.3d at 1364.
The facts of this case are distinguishable from Ergo Licensing for another reason. In this case, the parties' experts appear to dispute whether a person of ordinary skill in the art would consider Version #3 a similarly relevant embodiment while interpreting the claim, even though that version of the Dial-A-Matic was only offered in Europe. See Smith Decl. ¶ 18, ECF No. 198-3 at 423 (stating the controller "was sold only in Europe so no further discussion of the Version #3 is necessary"); Miller Decl. ¶¶ 9-13, ECF No. 200 at 4-7 (indicating Version #1 was sold in the United States and that Deere's 1997 Technical Manual for Diagnosis and Tests for three of Deere's combines described only Dial-A-Matic Versions #1 and #2). Further, even if a person of ordinary skill in the art would have been familiar with Versions #2 and #3, Deere & Co.'s expert does not indicate the two versions are as different in structure as the "control devices" discussed in in Ergo Licensing. Miller Decl. ¶¶ 9-13, ECF No. 200 at 4-7. Rather, the expert's declaration states that both were microprocessor-based controllers. Id. ¶¶ 9, 14, ECF No. 200 at 4, 7; cf. Ergo Licensing, 673 F.3d at 1364 (finding insufficient structure when the referenced structure could have been a microprocessor, or two other kinds of structures). This record does not provide clear and convincing evidence that a person of ordinary skill in the art would be unable to perceive a particular structure used to perform the claimed function upon reading the specification's reference to the head controllers incorporated into Deere products. Cf. Budde, 250 F.3d at 1382. Accordingly, the specification's reference to either Dial-A-Matic Version #2 or #3 does not render the description of structure insufficiently specific.
B. The "Head Controller" Amounts to a Microprocessor
Deere & Co.'s second argument asserts the structure of the "head controller" amounts to the disclosure of a general-purpose computer or microprocessor. ECF No. 215 at 27-29. When the disclosed structure corresponding to a means-plus-function term "amount[s] to nothing more than a general-purpose computer" or microprocessor, the specification must also disclose an algorithm describing "a means for achieving [the] particular outcome" required by the associated function. See HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1280 (Fed. Cir. 2012) (citation omitted) (finding the disclosure of a processor and transceiver amounted to the disclosure of a general-purpose computer). The specification may not disclose a "general purpose computer or microprocessor" without an accompanying algorithm because general purpose computers and microprocessors "can be programmed to perform very different tasks in very different ways." Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). For this reason, the disclosure of a general-purpose computer or microprocessor alone fails to "limit the scope of the claim to 'the corresponding structure, material, or acts' that perform the function as required by section 112[(f)]." Id. The specification's reference to either Dial-A-Matic Version #2 or #3 provides sufficient support for the conclusion that the specification's disclosure of a head controller amounts to the disclosure of a general-purpose computer or microprocessor. See '395 Patent at col. 3 ll. 33-52; cf. HTC Corp., 667 F.3d at 1280. Although the specification does not expressly reference a computer or processor, it explains the controller is "conventional in design and operation" and references head controllers "incorporated in a Deere combine" with the capacity to control the lateral position of the header and the height of the header. See '395 Patent at col. 3 ll. 33-52. Deere & Co.'s expert testimony indicates the controllers fitting this description utilized microprocessors "programmed with software to control header height as well as header lateral tilt." Miller Decl. ¶¶ 9, 14, ECF No. 200 at 4, 7. The specification is otherwise consistent with the use of a microprocessor to control header height and lateral position because it describes the head controller as receiving and outputting electrical signals as part of the control process. See '395 Patent at col. 3 ll. 36-45, col. 6 ll. 62-65.
The specification references Deere combine head controllers as the structure incorporated in only a "specific embodiment" of the invention. '395 Patent at col. 3 ll. 49-51. But the specification does not identify any alternative structures for the head controller. Outside of the reference to the Deere combine head controllers, the specification describes the controller as "conventional in design and operation." Id. at col. 3 l. 42. But Plaintiffs do not submit evidence of controllers "conventional in design and operation" that have a structure deviating from the structure of the Dial-A-Matic Version #2 or #3. See ECF No. 198 at 27-34; ECF No. 214 at 27-32; see generally Smith Decl., ECF No. 198-3. Indeed, Plaintiffs do not reference any "commercially available unit[s]" other than Deere's Dial-A-Matic products. Cf. Budde, 250 F.3d at 1381-82 (finding adequate evidence that a "commercially available unit" would be understood by one skilled in the art as structure capable of performing the recited function). Accordingly, the specification's reference to a controller that is "conventional in design and operation" avoids the charge of disclosing insufficiently specific structure only insofar as it discloses the structure of the Dial-A-Matic Version #2 or #3. Cf. id.; see supra Part IV.A.
Plaintiffs appear to argue the disclosed head controller does not amount to a general-purpose computer or microprocessor because in the Dial-A-Matic Version #2 the "decision to raise and lower the head" is "not performed" by the controller's microprocessor; the microprocessor only "provide[s] the proper electrical signal" to the hydraulic control system depending on the signal it receives "from the angular deflection sensing means." ECF No. 198 at 31 n.12 (quoting Smith Decl. ¶ 33, ECF No. 198-3 at 430). Deere & Co. rebuts this argument by citing to its proprietary software code for the microprocessors used in Dial-A-Matic Version #2 and #3. ECF No. 215 at 27-28. Excerpts of this software code, entered into the record, describe an algorithm controlling header height. Def.'s Ex. 1 Supp. Miller Decl. 23, ECF No. 200; Def.'s Ex. 4 Supp. Miller Decl. 182, ECF No. 200. Considering the evidence provided by each party, Deere & Co.'s position is persuasive. Plaintiffs' expert's declaration notwithstanding, the code used by Dial-A-Matic Versions #2 and #3 to control header height is clear and convincing evidence that the controllers on these combines did utilize the microprocessor to control header height. See Budde, 250 F.3d at 1376 ("[A]ny facts supporting a holding of invalidity must be proved by clear and convincing evidence.").
For these reasons, the record provides clear and convincing evidence supporting the conclusion that a person of ordinary skill in the art would interpret the specification to disclose a head controller that
amounts to a general-purpose computer or microprocessor. Cf. HTC Corp., 667 F.3d at 1280. Accordingly, the specification of the '395 Patent must also disclose an algorithm to satisfy the requirements of § 112(f). Cf. Aristocrat Techs., 521 F.3d at 1333.
C. Claim 12 Is Indefinite Because the '395 Patent Does Not Disclose an Algorithm
Deere & Co. argues the '395 Patent fails to disclose an algorithm. ECF No. 215 at 29-34. Plaintiffs, relying on their expert's declaration, argue the specification discloses a three-step algorithm. ECF No. 198 at 32-34. Deere & Co.'s argument is persuasive. The portions of the '395 Patent cited by Plaintiffs' expert in his declaration provide "nothing more than a restatement of the function" and thus fail to disclose an algorithm. Cf. Int'l Gamco, Inc. v. Multimedia Games, Inc., No. 04CV1053, 2009 WL 10664875, at *2 (S.D. Cal. Apr. 20, 2009). Accordingly, "control means" as used in claim 12 lacks sufficient disclosure of structure under 35 U.S.C. § 112(f), rendering the claim indefinite. Cf. Aristocrat Techs., 521 F.3d at 1338.
"The specification can express [an] algorithm 'in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.'" Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). The description of the algorithm, however, must provide "some detail about the means to accomplish the function." Finisar Corp., 523 F.3d at 1340-41; accord Noah Sys., 675 F.3d at 1317 ("[P]urely functional language, which simply restates the function associated with the means-plus-function limitation, is insufficient to provide the required corresponding structure.") A disclosure must "do more than parrot the recited function; it ha[s] to describe a means for achieving a particular outcome, not merely the outcome itself." HTC Corp., 667 F.3d at 1280.
Plaintiffs' expert asserts the '395 Patent discloses a three-step algorithm, and he cites to portions of the specification and claims that he views as describing this algorithm. Smith Decl. ¶ 36, ECF No. 198-3 at 432-33. The first step "is that the 'control means' receives and recognizes a signal from the angular deflection sensing means." Id. ¶ 36, ECF No. 198-3 at 433 (citing '395 Patent at col. 2 ll. 50-51, col. 3 ll. 36-37, col. 5 ll. 4-9, col. 8 ll. 33-34, 50-51). The second step "requires the control means to determine if the signal received from the angular deflection sensing means is for raising or lowering the header." Id. (citing '395 Patent at col. 8 ll. 51-53). The third step is "for the control means to output an analog electrical signal to the hydraulic control system." Id. (citing '395 Patent at col. 3 ll. 44-45). This purported algorithm, according to Plaintiffs, carries out the function of "raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil." ECF No. 198 at 27; see also '395 Patent at col. 8 ll. 50-53 ("[C]ontrol means coupled to said header and said angular deflection sensing means and responsive to said first signal for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil.").
The analysis of Plaintiffs' expert notwithstanding, it is the specification that must disclose the algorithm for a means-plus-function term. See RideApp Inc. v. Lyft, Inc., 845 F. App'x 959, 962 (Fed. Cir. 2021) (unpublished) (explaining the specification "[must] disclose an algorithm" (alteration
in original) (quoting Williamson, 792 F.3d at 1352)). Considering the sections of the '395 Patent cited by Plaintiffs' expert, the Court finds the document does not disclose an algorithm. Rather, the cited sections do no more than restate the functions set forth in claim 12. Cf. Noah Sys., 675 F.3d at 1317. This flaw is most obvious in the citation relied on for the second step of the purported algorithm, which is not drawn from the specification at all. For this step, Plaintiffs' expert cites directly to the language in claim 12 on which Plaintiffs rely for their statement of function in their proposed construction. See Smith Decl. ¶ 36, ECF No. 198-3 at 432-33 (citing '395 Patent at col. 8 ll. 51-53); compare '395 Patent at col. 8 ll. 51-53 ("for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil"), with ECF No. 198 at 27 ("for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil"). Viewed alone, "[t]his type of purely functional language, which simply restates the function associated with the means-plus-function limitation, is insufficient to provide the required corresponding structure." Noah Sys., 675 F.3d at 1317.
Even when this claim language is viewed in combination with the expert's other citations, no algorithm is apparent in the '395 Patent. For steps 1 and 3, Plaintiffs' expert cites to three sections of the specification and two parts of claim 12. Smith Decl. ¶ 36, ECF No. 198-3 at 432-33 (citing to '395 Patent at col. 2 ll. 50-51, col. 3 ll. 36-37, 44-45, col. 5 ll. 4-9, col. 8 ll. 33-34, 50-51). These portions of the specification explain the first step of the purported algorithm, the controller's signal reception, by explaining the controller is "coupled" to the "angular deflection sensor and responsive to the signal for raising or lowering the moving body." '395 Patent at col. 2 ll. 49-52; accord id. at col. 3 ll. 36-37, 43-44, col. 5 ll. 6-8 (explaining signal reception in three ways by stating, first, the controller "respon[ds] to the detected height of the corn header 12," second, the controller "receives an analog electrical signal from the controller interface 18," and third "[t]he electrical output from the rotation sensor 48 indicating the rotational position of shaft 64 and bracket 62 is provided to the head controller"). Signal reception is also stated in the language of claim 12: "control means couples to ... said angular sensing means and responsive to said first signal," where the first signal is provided by the angular deflection sensing means and "represent[s] the extent of deflection of said arm." Id. at col. 8 ll. 29-34, 49-51. The third step, signal production, is supported by only one citation, which explains the controller "outputs an analog signal to the hydraulic control system." Id. at col. 3 ll. 44-45. These portions of the '395 Patent, however, provide no information about the means used to carry out the function of "raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil." See id. col. 8 ll. 51-53. There is no information provided in the specification about the means used to translate the "first signal"—the signal received by the controller—into a determination of whether the header must be raised or lowered. According to Plaintiffs' own expert, the only purported description of this means is provided by claim 12's statement of the function itself. Smith Decl. ¶ 36, ECF No. 198-3 at 432-33 (citing '395 Patent at col. 8 ll. 51-53). But, as discussed, such a statement of function is not a valid disclosure of structure. Cf. Noah Sys., 675 F.3d at 1317. This disclosure, therefore, fails to "describe a means for achieving [the] particular outcome" of raising or lowering the header in a manner that maintains a designated
height above the soil. Cf. HTC Corp., 667 F.3d at 1280.
For these reasons, the Court finds clear and convincing evidence that the '395 Patent fails to disclose an algorithm as part of the structure associated with the means-plus-function term "control means." The disclosure of an algorithm is required to satisfy the requirements of § 112(f) for a means-plus-function term that discloses a computer or microprocessor as part of the disclosed structure. Aristocrat Techs., 521 F.3d at 1337-38. Failing to satisfy this requirement, "control means" is not stated with sufficient specificity, rendering claim 12 invalid under 35 U.S.C. § 112(b). Cf. id. at 1331, 1338; Nautilus, 572 U.S. at 910, 134 S.Ct. 2120. Because all other disputed terms appear in either this claim or in claims dependent on claim 12, the Court declines to construe the remaining terms at this time. The Court also declines to address at this time the validity of the remaining asserted claims—claims 18, 20-22, and 25.
V. CONCLUSION
The Court finds claim 12 of the '395 Patent invalid for indefiniteness due to the lack of a disclosed algorithm to accompany the means-plus-function term "control means."
IT IS SO ORDERED.