March 5, 2014

Means Plus Function Treatment Does not Apply Where Claim Element Conveys Known Structure to the Skilled Person

The Federal Circuit in Enocean GmbH v. Face International Corporation No. 2012-1645 (Fed. Cir. Jan. 31, 2014) reviewed claims which were found by the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences (“Board”) as invoking 35 U.S.C. §112, paragraph 6 as mean-plus-function claims based upon an argument that no structure was recited in the claims.  The Board explained that the word “receiver” is defined in the claims solely in terms of functional language, thus creating no difference between a “receiver’ and ‘signal receiving means.”  See, Id. (internal citations omitted).  At issue were claims in U.S. Patent Application No. 10/304,121 which included various claims referred to by the Court as “receiver claims.”  See Id., page 4.  The claims reviewed by the Court were Claims 37, 38, 43, and 45.  As an example, Claim 37 recites “a signal receiver for receiving a first electromagnetic signal transmitted by said first signal transmitter.” [1]

The Court noted that the claims lack the word “means” and found that when a claim does not include the word “means” it is presumed that the limitation does not invoke 35 U.S.C. §112, paragraph 6.  See Id., page 4 (internal citations omitted).

The Court stated “we hold that in this case the term is not the ‘black box that performs the recited function’” that Face would have us believe it is.”  See Id., page 8.  In particular, the Court found that the (1) demonstrated familiarity that one skilled in the art would have with the receiver led to the Court’s holding.  Se Id., page 8.  In particular, the Court found that “the Board itself made a factual finding that the ‘skilled worker would have been familiar with the design and principles of components utilized in the claimed invention, including . . . receivers’.”  See Id., page 7 (internal citations omitted).  Further, the Court credited  Enocean’s extensive evidence demonstrating that the term “receiver” conveys known structure to the skilled person.  See Id., page 7 (internal citations omitted).

The Court further relied on its own precedent that where sufficient structure is found in claim terms to avoid invoking 35 U.S.C. §112, paragraph 6. See Id., page 8 (internal citations omitted). The Court specifically cited five prior holdings finding that sufficient structure is provided to not invoke 35 U.S.C. §112, paragraph 6 including Linear Tech. Corp. v. Impala Linear Corp. (379 F.3d 1311 at 1320-21), the Court stated “that term ‘circuit’ itself in claims term ‘circuit’ for ‘monitoring a signal from the output terminal to generate a first feedback signal’” connotes structure.” See Id., page 8, citing Linear Tech. 379 F.3d at 1320-21

The Court also restates “Since the inventors did not invent the receiver, and the Board found that the structure was well known as of the filing date, the inventors were ‘not obliged . . . to describe . . . the particular appendage to which the improvement refers, nor its mode of connection with the principal machine.’”  See Id., page 11 (citing Webster Loom Co. v. Higgins, 105 US 580, 586 (1881)).


[1] 37. (Previously Presented) A switching system comprising:
an electromechanical generator for generating an oscillating voltage; a rectifier electrically connected to said generator;
a voltage regulator having an input side and an output side;
said input side of said voltage regulator being electrically connected to an output side of said rectifier;
a first signal transmitter electrically connected to said output side of said voltage regulator;
said first signal transmitter comprising a first electromagnetic signal generator sub-circuit connected to a transmission antenna;
a signal receiver for receiving a first electromagnetic signal transmitted by said first signal transmitter;
said signal receiver being adapted to initiate an action in response to said first electromagnetic signal transmitted by said first signal transmitter; and a switch having a first condition and a second condition;
said switch being in communication with said signal receiver;
said switch being adapted to change between said first condition and said second condition in response to said initiated action.