Docket No. 2017-2553
PROST, BRYSON, O’MALLEY
August 15, 2018
Brief summary: ITC finding that Diebold violated § 337 by importing components of automated teller machines (“ATMs”) that infringe means-plus-function claims reversed as invalid for indefiniteness (§ 112, para. 6).
Summary: Diebold appealed ITC finding that they violated § 337 of the Tarriff Act of 1930 by importing components of automated teller machines (“ATMs”) that infringe certain claims of US 8,523,235, that those claims are not invalid for indefiniteness (“cheque standby unit”), and the construction of certain claim limitations. The FC panel opinion explains that the “cheque standby unit” is recited in each of the disputed claims which “specify” where it is “placed” and “configured to” return the check to user if requested to do so, but also that “[t]he specification does not mention” it “but instead references a ‘cheque temporary standby unit’ in three portions of the detailed description” and states that it is part of “‘a preferably entire operation’ of the invention”. The FC panel also explained that this limitation “was added during prosecution to overcome prior art” that “did not disclose returning stored cheques to the user after the user canceled a deposit.” At the ITC, the administrative law judge (ALJ) found the term not to be indefinite since under “its plain and ordinary meaning…a person of ordinary skill in the art ‘would understand’” it, crediting Hyosung’s expert testimony. The ALJ also examined the claim as a means-plus-function claim (pre-AIA § 112, para. 6) “and determined that the ‘235 patent discloses the required structure of ‘standing and temporary storage of media’” as would be understood by a person of ordinary skill in the art. The FC panel reviewed the ITC claim construction de novo (Teva, US 2015), first concluding that “cheque standby unit” is “drafted in a manner that invokes § 112, para. 6” (Williamson, FC 2015 (en banc)) even though it “lacks the word ‘means’” since Diebold demonstrated “the claim fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function’” (Watts, FC 2000). The FC panel found “that the claims do not recite any structure” and “describe the term…solely in relation to its function and location in the apparatus” (“None of the dependent claims add limitations that either describe particular structural features or flesh out whether the term has a particular structural meaning.”) The specification, the FC panel concluded, “does not include any examples of what structures or class of structures fall within the definition of a ‘cheque standby unit’”, and explained in FN3 that “the ‘235 patent’s incorporation” by reference of another patent application “expressly for its ‘detailed description’ of two sensors in insufficient” (Advanced Display, FC 2000). The FC panel also found that Deibold’s failure to contradict Hyosung’s expert testimony was not fatal to its argument as that testimony was not “sufficient to overcome conclusions drawn from the intrinsic record” (it did not show “reasonably well understood meaning in the art at the time of invention”; contrasts situations in Inventio AG (FC 2011), Apex (FC 2003), and Greenberg, FC 1996); analogous to Advanced Ground Inf. Sys., FC 2016). Thus, the FC panel concluded § 112, para. 6 applies to “cheque standby unit”. It next concluded that “[t]he specification did not disclose sufficient structure corresponding to the claimed function” (Williamson citing Noah Sys., FC 2012). Thus, the ITC decision was reversed.