Disclosed algorithm found to provide sufficient support for mean-plus-function claim term

Intelligent Automation Design, LLC v. Zimmer Biomet CMF et al.

Docket No. 2019-1100
January 30, 2020

Brief Summary: DC determination of means-plus-function construction affirmed but reversed as to whether sufficient structure was disclosed.

Summary: IAD appealed DC finding that claims 1 and 6 of US 7,091,683 relating to methods for using a motor to drive a screwdriver bit invalid for indefiniteness under 112, § 6 (means-plus-function). Under 112, § 6, “‘[a]n element in a claim for a combination…expressed as a means…for performing a specified function…shall be construed to cover the corresponding structure’ described in the specification.” Where the word “means” is used in a claim, a “rebuttable presumption that 112, § 6 applies” that can be overcome by showing “an ordinarily skilled artisan would understand the recited claim element ‘to have sufficiently definite meaning as the name for the structure’” (Williamson, FC 2015; Noah Sys., FC 2012 (“indefinite it a person of ordinary skill in the art would unable to recognize the structure in the specification and associate it with the corresponding function in the claim”, “an algorithm for performing the claimed function…in any understandable terms” (quoting Typhoon Touch, FC 2011)); Bosch, FC 2017; In re Aoyama, FC 2011 (“perceive the founds of the invention”)). Claim 1 is directed to a “method of controlling a motor” and claim 6 is directed to a “speed/torque controller”. The parties disputed whether “determining a time when the torque reaches a maximum” in claim 6 is a means-plus-function term and whether the specification provided sufficient structure. The DC found claim 1 to be in means-plus-function form and it includes the same term. The FC panel explained that “that function should have the same meaning in claim 6” (In re Varma, FC 2016 (“the same phrase in different claims of the same patent should have the same meaning unless ‘it is clear that the same phrase has different meanings in different claims’”)). And while “recitation of a ‘control circuit for’ performing the determining function in claim 6 provides detail about how the system achieves the function”, the FC panel also explained, it “does not change the meaning” of the “determining” limitation or “provide enough description of the structure to render the limitation structural, rather than functional” (Power Integ., FC 2013). Claim 6 was therefore found to be a means-plus-function claim. The FC panel disagreed with an argument against means-plus-function construction since the required construction would “render[] the claimed invention inoperable” (AIA Eng’g, FC 2011). The FC panel then considered whether the specification disclosed sufficient structure, and found that it did since “the disclosed algorithm and the claimed function both solve the problem of establishing the ‘optimum point of grip’” such that “an ordinarily skilled artisan could perceive the bounds of the invention” (“a reasonably certain description”, “the brief passage…suffices to define the bounds”, “particularly in light of the specification’s explanation of the assumptions inherent in the method”). It also found expert testimony to be “irrelevant” since “the specification ‘unambiguously set[s] forth’ the meaning of [the] claim term” (Personalized Media, FC 1998). Thus, the DC decision was affirmed-in-part and reversed-in-part.

This entry was posted in Claim Construction, Claim Differentiation, Means-plus-function, Uncategorized. Bookmark the permalink.

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