Robert Bosch, LLC v. Snap-On Incorporated et al.

Docket No. 2014-1040

October 14, 2014

Brief Summary: Strong presumption of no means-plus-function of “device” terms overcome because “[t]he claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art”. The terms were therefore found indefinite and the claims invalid.

Summary: Bosch appealed DC holding that all claims of its US 6,782,313 relating to a diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed. The claim terms at issue were “program recognition device” and “program loading device” which are recited in sole independent claim 1. The DC concluded that “program recognition device” invoked § 112, para. 6 (now § 112(f)) “based on the presence of the phrase ‘by means of’ in claim 1.” It also determined that “program loading device” was not tied to the word “means” but “was an indefinite means-plus-function term.” The FC opinion explained that the determination of whether a claim limitation invokes § 112, para. 6 requires first determining if it is drafted in means-plus-function format (use of the term “means” triggers a rebuttable presumption that § 112, para. 6 governs, opposite “strong” presumption of no § 112, para. 6 trigger where claim does not recite “means”, citing EnOcean, FC 2014) and then “identifying any ‘corresponding structure, material, or acts described in the specification’” (Welker Bearing, FC 2008). If such a structure, material or act cannot be identified, “the claim term is indefinite” (Noah, FC 2012). The FC panel concluded that the DC erred in construing “progam recognition device” as a means-plus function term (“unaware of any precedent stating that the presumption is triggered by…’by means of’”) but that this error was harmless because “even without a presumption, the term…nonetheless invokes § 112, [para.] 6”. This conclusion was reached after considering whether the “‘strong’ presumption against means-plus-function claiming is overcome” (Lighting World, FC 2004) (“whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions”). Snap-On argued that the “device” terms “lack sufficiently definite structure” (“this court has found the word ‘device’ to be a non-structural, ‘nonce’ word” (Mass. Inst. Of Tech., FC 2006). Bosch did not argue the device issue but that the terms “both name physical electronic structures with physical connections to other components discussed in the ‘313 patent.” The FC panel agreed with the DC that presumption of no means-plus-function was overcome because “[t]he claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art”. And because the “specification fails to identify corresponding structures” (Biomedino, FC 2007) both terms were concluded to be indefinite and the claims invalid.

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