CAFC does not find means-plus-function in a “height adjustment mechanism”

Scott Daniels | November 7, 2012

Flo Heathcare Solutions v. Kappos

October 23, 2012

Panel: Newman, Plager, and Wallach.  Opinion by Wallach.

PROCEDURAL SUMMARY

The patentee sued the defendant for infringement.  The defendant then requested inter partes reexamination of the patent.  The trial judge stayed the infringement action, pending completion of the reexamination.  The patent reexamination examiner and the Patent Office Board rejected the claims as being anticipated by the prior art.  On appeal, the CAFC disagreed with the PTO Board’s claim construction; but even under the CAFC’s claim construction, it found that the claims were anticipated and therefore affirmed the PTO’s rejection of the claims

POINTS OF LAW

  1. Use of the word “means” in a claim limitation creates a rebuttable presumption that the limitation is means-plus-function to be construed according to 35 U.S.C. § 112, ¶ 6.  The presumption is rebutted if the claim recites “sufficient structure, material, or acts” to perform the recited function.
  2. The absence of the word “means” in a claim limitation creates a rebuttable presumption that the limitation is not means-plus-function and not to be construed according to 35 U.S.C. § 112, ¶ 6.  This presumption is a strong one, and overcome only where “the limitation essentially is devoid of anything that can be construed as structure.”
  3. Section 112, ¶ 6 does not apply where the limitation “contains a term that ‘is used in common parlance or by persons of skill in the pertinent art to designate structure.’”
  4. Claim terms like “mechanism” standing alone “connote no more structure than “means.”
  5. Dictionary definitions of words of the limitation may be considered to determine the extent to which the limitation recites structure.  The patent specification may also be consulted to determine whether a word in a limitation connotes structure.
  6. The patent claimed a mobile computer workstation for use by medical professionals.  The workstation included a chassis with a horizontal tray, a tiltable display screen, and “a horizontal adjustment mechanism for altering the height of the horizontal tray.”

THE FACTS

Representative claim 8 recited:

A mobile workstation, comprising:

a moveable chassis;

a substantially horizontal tray supported by the chassis that defines a work surface;

a height adjustment mechanism for altering the height of the horizontal tray;

a display screen adjacent to the work surface that is tiltable relative to the work surface;

an input device tray supported adjacent to the work surface;

and a power unit supported by the chassis for supplying power to the display screen.

(Emphasis added).

 

AT THE PATENT OFFICE

The patentee argued that the “height adjustment mechanism” was a means-plus-function limitation and should therefore be construed as covering the corresponding structures disclosed in the specification, plus their equivalents.  That is, the adjustment mechanism of the claims was limited to the length-adjustable vertical beam mentioned in the specification; the claims were therefore patentably distinct over the prior art references that disclosed fixed-length vertical structures

The examiner disagreed.  He noted that the “horizontal adjustment mechanism” limitation of the claim did not include the phrase “means for.”  Further, he found that the claim does recite structure for performing the adjustment function recited in the claim.  The examiner therefore concluded (1) that there was a presumption that 35 U.S.C. § 112, ¶ 6 does not apply and (2) this presumption was not overcome.  On the basis of his claim construction, the examiner found that the claim was anticipated because it did not distinguish over the prior fixed-length vertical structures.

The Board agreed with the patentee’s claim construction and disagreed with the examiner’s, finding that 35 U.S.C. § 112, ¶ 6 does apply because the claim limitation “does not recite sufficient structure for performing the recited function” of adjusting height (emphasis added).  The Board found that the claim phrase “height adjustment” does not “inherently impart structure.”  On the other hand, the Board maintained the examiner’s rejection because the specification, even if a limitation on the scope of the claims, does not require exclusion of the prior art vertical beams.

AT THE FEDERAL CIRCUIT

On appeal, the CAFC agreed with the examiner’s claim construction, concluding that the 35 U.S.C. § 112, ¶ 6 does not apply.  The CAFC first noted the presumption.  It then stated that even if the word “mechanism” standing alone did not suggest structure, the phrase “height adjustment mechanism” did suggest structure, citing common dictionaries.  The specification was consistent with the CAFC’s conclusion; in all 24 instances in which the phrase “height adjustment mechanism” appeared, it was used to indicate a class of structures.

The CAFC concluded that claims were anticipated and affirmed the rejection.  In doing so, it noted that the patentee had the option of amending its claims to recite that the height adjustment mechanism included a vertical beam.

TAKEAWAY

The standards for determining whether the two presumptions under 35 U.S.C. § 112, ¶ 6 are rebutted – from the presence of the word “means” or the absence of the word “means” – differ.

Use of the word “means” in a claim limitation creates a rebuttable presumption that the limitation is means-plus-function to be construed according to 35 U.S.C. § 112, ¶ 6.  The presumption is rebutted if the claim recites “sufficient structure, material, or acts” to perform the recited function.

The absence of the word “means” in a claim limitation creates a rebuttable presumption that the limitation is not means-plus-function and not to be construed according to 35 U.S.C. § 112, ¶ 6.  This presumption is a strong one, and overcome only where “the limitation essentially is devoid of anything that can be construed as structure.”

Also, patent drafters should be aware of the possibility that examiners and judges might perceive certain non-descriptive claim terms, such as “mechanism,” as being equivalent to the word “means.”  They should always consider adding more dependent claims.  Here, the patentee might have won if it had included a dependent claim reciting a vertical beam.

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