"If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid the price but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification."Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 948 (Fed Cir. 2007) (quoting Med. Instrumentation Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003)). This is not an onerous burden.
Assessing whether a means-plus-function claim element is indefinite involves a two-step analysis: "1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function." Biomedino, L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). If the specification does not disclose the corresponding structure, "the claim will be found invalid as indefinite." Id.
General legal principles regarding indefiniteness are discussed in Section II., above. As to means-plus-function terms, "[i]f there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Further, "the written description must clearly link or associate structure to the claimed function."
"If there is no structure in the specification corresponding to the means plus function limitation in the claims, the claim will be found invalid as indefinite." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). "This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6."
See id. Where a claim element uses the word "means," yet includes sufficient structure for the claimed function, then that element will not be treated as a means-plus-function element. Compare TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1260 (Fed. Cir. 2008) (citing approvingly to Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) that "baffle means" recited sufficient structure in the term "baffle" to rebut the § 112, ¶ 6 presumption) with Net MoneyIN, 545 F.3d at 1366 (concluding that "first bank computer" in the limitation of "first bank computer including means for generating an authorization indicia" did not recite sufficient structure to rebut § 112, ¶ 6 presumption); Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (concluding that "control means" did not rebut § 112, ¶ 6 presumption because it could not be implied that "control" meant "controller"). A structural term used in the claim language is sufficient even if the claim term used to designate structure covers a broad class of structures by their function.
As an initial matter, the parties do not dispute that the "means for mounting" and "mechanism for managing" limitations are means-plus-function limitations governed by § 112 ¶ 6. Appellant's Br. 8; Appellee's Br. 27; see Order, 2016 WL 1409748, at *5, If a claim contains a means-plus-function limitation, and the written description lacks structure for those means, we have held that the claim is indefinite and hence invalid. E.g., Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950-53 (Fed. Cir. 2007). Therefore, we proceed to "attempt to construe the disputed claim term by identifying the corresponding structure, material, or acts described in the specification to which the claim term will be limited."
There must first be a determination of whether the claim is stated in a means-plus-function format. Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946 (Fed.Cir. 2007), cert. denied, 552 U.S. 1039, 128 S.Ct. 653, 169 L.Ed.2d 510 (2007). If it is, the Court must identify the function claimed and then identify the corresponding structure in the description of the patent. Id.
35 U.S.C. § 112, ¶ 6. The quoted provision establishes a "quidpro quo," whereby, in exchange for the ability to make broad, generic claims, a patentee is obligated to "indicate in the specification what structure constitutes the means" for performing the function at issue. SeeBiomedino, LLC v. WatersTechns. Corp., 490 F.3d 946, 948 n. 1 (Fed. Cir. 2007). When a claim incorporates the word "means" to describe a limitation, a presumption arises that the inventor intended to invoke § 112, ¶ 6. Biomedino, 490 F.3d at 950.
When a claim uses the term "means" to describe a limitation, a rebuttable presumption inheres that the inventor used the term to invoke § 112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). "This presumption can be rebutted when the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety."
Ultimately, if no corresponding structure is disclosed in the specification, the claim term must be construed as indefinite.See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) ("If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite."). 1. "Adjusting Means"