Flo Healthcare Solutions, LLC v. Kappos

• Decision Date: 23 October 2012
• Docket Number: No. 2011–1476.,2011–1476.
• Parties: FLO HEALTHCARE SOLUTIONS, LLC, Appellant, v. David J. KAPPOS, Director, United States Patent and Trademark Office, Appellee, and Rioux Vision, Inc., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

697 F.3d 1367

FLO HEALTHCARE SOLUTIONS, LLC, Appellant,

v.David J. KAPPOS, Director, United States Patent and Trademark Office, Appellee,andRioux Vision, Inc., Appellee.

No. 2011–1476.

United States Court of Appeals,Federal Circuit.

Oct. 23, 2012.

George T. Schooff, Harness, Dickey & Pierce, PLC, of Troy, Michigan, argued for appellant.

Thomas W. Krause, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor and Amy J. Nelson, Associate Solicitor. Of counsel was Kristin L.R. Sawert, Associate Solicitor.

Before NEWMAN, PLAGER, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge PLAGER.

Additional views filed by Circuit Judge PLAGER.

Additional views filed by Circuit Judge NEWMAN.

PLAGER, Circuit Judge.

Flo Healthcare Solutions, LLC (“Flo”) appeals from a decision of the Board of Patent Appeals and Interferences (“Board”) ¹ of the United States Patent and Trademark Office (“PTO”) in inter partes Reexamination Control No. 95/000,251.² The Board upheld the examiner's rejections of claims 8–17, 23, 24, 35, 40–42, 73, 76–79, 87, and 88. After full review of the parties' arguments we arrive at the same conclusion, but get there, as we shall explain, by a different route. Accordingly, we correct the Board's analysis, but affirm the Board's conclusion.

Background

The patent under reexamination, United States Patent No. 6,721,178, describes a mobile computer workstation intended for medical care environments. Id. at [54]. Figures 4A, 10A, and 16 of the '178 patent illustrate representative embodiments of the claimed invention.

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Flo sued Rioux Vision, Inc. (“Rioux”) in the United States District Court for the Northern District of Georgia for infringing the '178 patent.³ Rioux then initiated an inter partes reexamination of the ' 178 patent in the PTO, which led to this appeal.⁴

The PTO granted Rioux's request for inter partes reexamination, finding a substantial new question of patentability with respect to all forty-four claims of the '178 patent. The examiner initially issued thirteen different obviousness rejections, nine of which relied on United States Patent No. 5,287,815 to Gross (“Gross”) as a primary reference. Gross discloses a computer workstation for supporting and positioning a computer keyboard and video display terminal at optimal ergonometric positions with respect to the user. Id. at [57]. Figures 1 and 8 of Gross are representative.

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Flo traversed the rejections, added 103 new claims, and submitted an Information Disclosure Statement listing twelve non-patent literature references. The examiner then issued an Action Closing Prosecution in which he found fifty-three of the claims allowable and determined that sixteen would be allowable if rewritten in independent form. The examiner withdrew the rejections that did not rely on Gross as a primary reference, and issued seven new rejections based on several of the references Flo had listed in its Information Disclosure Statement. Three of the new rejections cited an industry brochure (“Ergotron”) as a primary reference. Ergotron discloses customizable mobile computer workstations. In one example, Ergotron illustrates a workstation with an adjustable work surface to fit the height of the user.

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In response to the Action Closing Prosecution, Flo amended the objected claims to place them in allowable format, and argued, inter alia, that the prior art rejections were improper as applied to those of the pending claims that recite a “height adjustment mechanism.” Independent claim 8 is representative of those claims.

8. 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.

'178 patent col. 26, ll. 14–27 (emphasis added).

Flo argued that the “height adjustment mechanism” limitation is a means-plus-function limitation that invokes 35 U.S.C. § 112, ¶ 6. Flo further argued that the function performed by the “height adjustment mechanism” is “altering the height of the horizontal tray,” and that the corresponding structure disclosed in the written description for performing that function includes a length-adjustable vertical beam. Flo further argued that both Gross and Ergotron use fixed-length vertical structures to adjust the height of their horizontal work surfaces, and that none of the cited secondary references cures this deficiency in Gross and Ergotron. Thus, Flo argued, the claims reciting a “height adjustment mechanism” were patentable over the cited prior art.

The examiner then issued a Right of Appeal Notice in which he determined that sixty-two of the pending claims were patentable and that forty-five would be allowable if rewritten in independent form. However, the examiner maintained the rejections of the “height adjustment mechanism” claims. According to the examiner, “the claims at issue here do not contain the phrase ‘means for,’ and are therefore presumed not to fall under section 112 paragraph 6. They do recite structure for performing the function recited in the claim, so the presumption is not overcome.” Right of Appeal Notice at 25. Flo appealed to the Board.

The Board agreed with Flo that “the disputed claim limitation [height adjustment mechanism] must be interpreted in accordance with 35 U.S.C. § 112, ¶ 6” because it “does not recite sufficient structure for performing the recited function.” Board Opinion, 2011 WL 289281, at *9. According to the Board, “the terms ‘height adjustment’ merely qualify the recited ‘mechanism,’ which has not been shown to inherently impart structure, with a function or purpose (‘height adjustment’).” Id. The Board noted, however, that “[t]he description in the '178 Patent ... does not compel a conclusion that the recitation of a ‘height adjustment mechanism’ necessarily requires the presence of a vertical beam.” Id. at *10. Thus, the Board “f[ou]nd no error in the Examiner's conclusion that the limitation, even if subject to 35 U.S.C. § 112, ¶ 6, does not require a vertical beam as part of the recited ‘height adjustment mechanism.’ ” Id. at *9 (emphasis in original). Based on the examiner's factual finding that Gross and Ergotron read on the “height adjustment mechanism” limitation absent a vertical beam requirement, the Board affirmed the prior art rejections with respect to all but one of the disputed claims. Id. at *10–11.

Flo appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

Discussion

I.

According to Flo, the Board properly held that the “height adjustment mechanism” limitation must be interpreted in accordance with 35 U.S.C. § 112, ¶ 6. Appellant's Corrected Br. at 10. Flo argues, however, that the Board committed legal error when it construed the “height adjustment mechanism” limitation as not including a length-adjustable vertical beam, because the written description “clearly links and associates a length-adjustable vertical beam with altering or adjusting the height of the horizontal tray.” Id. at 17 (emphasis in original).

We agree with Flo that the Board's decision was predicated upon a legally erroneous construction of the “height adjustment mechanism” limitation. Id. at 4. However, the error does not lie, as Flo urges, in the Board's analysis of the structures disclosed in the written description for altering the height of the horizontal tray. Rather, the Board erred in holding that the “height adjustment mechanism” limitation invokes 35 U.S.C. § 112, ¶ 6 in the first place.

Our cases have established two guidelines for determining whether the special rules of claim construction set forth in § 112, ¶ 6 apply to a given claim limitation. The guidelines are straightforward: use of the word “means” creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6, while failure to use the word “means” creates a rebuttable presumption that the drafter did not intend the claims to be governed by § 112, ¶ 6. See Personalized Media Commc'ns LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703–04 (Fed.Cir.1998). In rebutting the presumption, when a claim recites a function “but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format even if the claim uses the term means.” Id. at 704 (quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed.Cir.1997) (internal quotes omitted)). Conversely, “a limitation lacking the term ‘means' may overcome the presumption against means-plus-function treatment if it is shown that ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’ ” Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1353 (Fed.Cir.2006) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed.Cir.2002)).

Since the term “means” is not present in the claims on appeal, it is the latter form of rebuttal that is at issue here. The Board determined that the presumption was sufficiently rebutted because “the disputed claim limitation [height adjustment mechanism] does not recite sufficient structure for performing the recited function.” Board Opinion, 2011 WL 289281, at *9. According to the Board, “the terms ‘height adjustment’ merely qualify the recited ‘mechanism,’ which has not been shown to inherently impart structure, with a function or...