Robert Bosch, LLC v. Snap-On Inc.

• Decision Date: 14 October 2014
• Docket Number: No. 2014–1040.,2014–1040.
• Citation: 769 F.3d 1094
• Parties: ROBERT BOSCH, LLC, a Delaware corporation, Plaintiff–Appellant, v. SNAP–ON INCORPORATED, a Delaware corporation, and Drew Technologies, Incorporated, a Michigan corporation, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

769 F.3d 1094

ROBERT BOSCH, LLC, a Delaware corporation, Plaintiff–Appellant,

v.SNAP–ON INCORPORATED, a Delaware corporation, and Drew Technologies, Incorporated, a Michigan corporation, Defendants–Appellees.

No. 2014–1040.

United States Court of Appeals,Federal Circuit.

Oct. 14, 2014.

Jonathan S. Franklin, Fulbright & Jaworski LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief were Shelia Kadura, of Austin, TX, Erik G. Swenson, of Minneapolis, MN, and George W. Jordan, III, of Houston, TX.

Gary M. Ropski, Brinks Gilson & Lione, of Chicago, IL, argued for defendants-appellees. With him on the brief were Kori Anne Bagrowski and James G. DeRouin. Of counsel on the brief were James K. Cleland, Jon H. Beaupré and John A. Lingl, of Ann Arbor, MI.

Before PROST, Chief Judge, TARANTO and HUGHES, Circuit Judges.

PROST, Chief Judge.

Plaintiff–Appellant Robert Bosch, LLC (“Bosch”) appeals the decision from the United States District Court for the Eastern District of Michigan holding that all claims in U.S. Patent No. 6,782,313 (“'313 patent”) are invalid as indefinite. See Robert Bosch LLC v. Snap–On, Inc., No. 12–11503, 2013 WL 4042664 (E.D.Mich. Aug. 9, 2013). We agree with the district court that the terms “program recognition device” and “program loading device” invoke 35 U.S.C. § 112, ¶ 6 (2010) and that the specification does not disclose corresponding structure for these terms. Therefore, we affirm the district court's holding that all claims in the '313 patent are invalid.

I. Background

Bosch owns the rights to the '313 patent, which claims a diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed. '313 patent col. 1 ll. 8–9, col. 1. l. 61–col. 2. l. 1. The claimed external diagnostic tester is made up of a “program recognition device” and a “program loading device,” which are the only two claim terms at issue in this appeal. Both terms are recited in claim 1, the sole independent claim of the '313 patent, which is reproduced below:

1. An external diagnostic tester for motor vehicles, the motor vehicles having programmable control units with self-diagnostic means, wherein the control units can be connected to the external diagnostic tester via a diagnostic/test plug in the motor vehicle, the external diagnostic tester comprising,

a program recognition and program loading device, wherein a program version contained in a connected control unit is queried and recognized by means of the program recognition device, and, if the program available in the motor vehicle and recognized via the diagnostic/test plug is not stored there in a latest and most current version, a respective most current version is loaded by the program loading device into a program storage device of the pertinent control unit of the motor vehicle, wherein the external diagnostic tester automatically establishes communication with a central dat[a] base in order to check the program version and, if necessary, to obtain the current program version that applies for the control unit connected to the diagnostic tester and to store it there.

Id. at col. 4 ll. 18–38 (emphases added).

The specification contains no figures, but it states that the “program recognition device” connects to the motor vehicle via a diagnostic plug. '313 patent abstract, col. 2 ll. 22–24. The “program recognition device” then queries and recognizes the program version contained in the control unit of the motor vehicle. Id. at col. 2 ll. 20–23.

According to the specification, the “program loading device” also connects to the control unit through the diagnostic plug. '313 patent col. 1 ll. 27–31. If necessary, the “program loading device” loads an updated version of a program into the control unit. Id. at col. 2 ll. 25–29.

Bosch initially sued Defendant–Appellee Snap–On Inc. for infringement of the '313 patent in the Central District of California. Bosch later added infringement allegations against Defendant–Appellee Drew Technologies, Inc., and the case was transferred to the Eastern District of Michigan. After initial claim construction briefing, the Appellees (hereinafter, “Snap–On”) asserted that the two claim terms “program loading device” and “program recognition device” are means-plus-function terms under § 112, ¶ 6 and are indefinite. Regarding the first claim term, “program recognition device,” the district court adopted a presumption that the term invokes § 112, ¶ 6 based on the presence of the phrase “by means of” in claim 1. The district court then found that the presumption it had applied was not overcome and that the term was indefinite. Bosch,2013 WL 4042664, at *5–7. Regarding the second claim term, “program loading device,” the district court adopted the presumption that it did not invoke § 112, ¶ 6 based on the lack of the word “means,” but the district court still concluded that “program loading device” was an indefinite means-plus-function term. Id. at *8–9. The parties then stipulated to a final judgment of invalidity, and this appeal followed.

II. Applicable Law

Section 112, ¶ 6 (now § 112(f)) allows a patentee to express a claim limitation as “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof,” and the section provides that claim limitations expressed in this manner “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

The framework under which we determine if a claim limitation invokes § 112, ¶ 6 is a two-step process. First, we must determine if the claim limitation is drafted in the means-plus-function format. The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term. EnOcean GmbH v. Face Int'l Corp., 742 F.3d 955, 958 (Fed.Cir.2014) (citations omitted). Alternatively, where the claim language does not recite the term “means,” we presume that the limitation does not invoke § 112, ¶ 6. Id. When a claim term lacks the word “means,” the presumption can be overcome if the challenger demonstrates that “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’ ” Id. (citation omitted).

If we conclude that a claim term invokes § 112, ¶ 6, we proceed to the second step and attempt to construe the disputed claim term by identifying the “corresponding structure, material, or acts described in the specification” to which the claim term will be limited. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed.Cir.2008). If we are unable to identify any “corresponding structure, material, or acts described in the specification,” the claim term is indefinite. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed.Cir.2012) (“[A] means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.”) (citations omitted).

Determining whether certain claim language invokes § 112, ¶ 6 “is an exercise in claim construction and is therefore a question of law, subject to de novo review.” Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed.Cir.2011). Indefiniteness is a question of law that is also reviewed de novo. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed.Cir.1999).

III. DISCUSSION

This appeal concerns Bosch's challenges to the district court's holding that two claim terms are means-plus-function terms and are indefinite for failing to disclose corresponding structure. For the reasons discussed herein, we conclude that the district court erred in applying the presumption that “program recognition device” is a means-plus-function term. However, this error was harmless because we conclude that even without a presumption, the term “program recognition device” nonetheless invokes § 112, ¶ 6. We further agree with the district court that “program loading device” also invokes § 112, ¶ 6. And because the specification fails to identify corresponding structures that are required where § 112, ¶ 6 applies, we conclude that the terms “program recognition device” and “program loading device” are indefinite.

A. No Presumption that “Program Recognition Device” Is a Means–Plus–Function Term

Claim 1 of the '313 patent includes two references to a “program recognition device”: “the external diagnostic tester comprising, a [1] program recognition and program loading device, wherein a program version contained in a connected control unit is queried and recognized by means of the [2] program recognition device....” '313 patent col. 4 ll. 22–27 (emphasis added). The district court adopted a presumption that “program recognition device” is a means-plus-function term based on the phrase “by means of” in claim 1. Bosch,2013 WL 4042664, at *5. The district court then held that the presumption it had applied was not overcome, reasoning that “the claim language is silent as to the structure for ‘program recognition device.’ ” Id. Therefore, the district court concluded that this term invoked § 112, ¶ 6. Id. at *6.

On appeal, Snap–On does not defend the district court's invocation of the “means” presumption, Appellee's Br. 17 n. 3, and Bosch challenges it. Bosch argues that the presumption is not triggered by any and every use of the word “means” in a patent claim. See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed.Cir.1996) (“[M]ere incantation of the word ‘means' in a clause reciting predominantly structure cannot evoke section 112, ¶ 6.”). Here, Bosch notes that when first reciting a program recognition device, the claim does not use the term “means” at all, much less the classic phrase “means for.” And Bosch claims that the subsequent use of the term “by means of”...