Touchcom, Inc. v. Dresser, Inc., 2:04 CV 246.

• Decision Date: 05 December 2005
• Docket Number: No. 2:04 CV 246.,2:04 CV 246.
• Citation: 427 F.Supp.2d 730
• Parties: TOUCHCOM, INC., et al. v. DRESSER, INC.
• Court: U.S. District Court — Eastern District of Texas

427 F.Supp.2d 730

TOUCHCOM, INC., et al. v. DRESSER, INC.

No. 2:04 CV 246.

United States District Court, E.D. Texas, Marshall Division.

December 5, 2005.

James N. Haltom, Haltom and Doan LLP. Darby Vincent Doan, Haltom and Doan LLP, Texarkana, TX, Craig M. White, Gregory M. Smith, Jeffrey Kosc, John S. Letchinger, Jonathan A. Harris, Thomas J. Ring, Timothy K. Klintworth, Wildman Harrold Allen & Dixon, Chicago, IL, Elizabeth L. Derieux, Brown McCarroll, Sidney Calvin Capshaw, III, Brown McCarroll, Longview, TX, for Touchcom Inc.

Michael Brett Johnson, Thomas M. Melsheimer, Carl Edward Bruce, Neil J. McNabnay, P. Weston Musselman, Jr., Thomas Howard Reger, II, Fish & Richardson PC, Dallas, TX, Earl Glenn Thames, Jr., Michael Edwin Jones, Potter Minton, Tyler, TX, for Dresser Inc.

MEMORANDUM OPINION AND ORDER

WARD, District Judge.

The court grants the defendant's motion for summary judgment for claim invalidity based on indefiniteness (# 157) for the reasons expressed in this order.

1. Introduction.

This patent infringement case presents issues of claim invalidity for indefiniteness bound up in issues of claim construction. The questions are whether certain software limitations are drafted according to 35 U.S.C. § 112 ¶ 6 and, if so, whether the specification discloses corresponding structure in the form of algorithms. The defendant's motion is well-taken, and the court will render a summary judgment of invalidity and dismiss this case.

2. Background.

The technology in this case relates to pumps — primarily those which dispense fuel. United States Patent No. 5,027,282 ("the '282 patent") describes a user-friendly pump system which includes a display and input means connected to a pump means. In the preferred embodiment described in the patent, the display and input means comprises a touch screen display with attendant electronics. The pump and display and input means are connected to a computer concurrently running software controlling the pump and the display and input means. Thus, the user-friendly pump is capable of, for example, fueling the vehicle while simultaneously performing other tasks, such as asking whether the user also wants to purchase a car wash.

The patent includes only one independent claim. Claim 1 provides:

1. An interactive pump system capable of interacting with and responding to responses from a user, the system comprising:

a pump means;

a central processing unit connected to the pump means; and

a display and input means including a plurality of instruction displays, and being connected to the pump means and the central processing unit;

wherein the pump means is operable to transmit transaction data, concerning fluid pumped, to the display and input means which will display the transaction data, display one instruction display and transfer input responses from a user to the central processing unit, the central processing unit being operable to process the input responses and to control the pump means according to the responses;

characterised in that the central processing unit includes pump task means, display and input task means and application task means, each task means, in operation running concurrently with the other task means, with the pump task means controlling the pump means, the display and input task means controlling the display and input means, and the application task means receiving and processing the input responses and transferring results into pump directions to the pump task means.

The court must determine whether the "display and input task means" and "application task means" are means-plus-function limitations. If they are, the court must then determine whether sufficient structure is disclosed in the '282 patent for performing the claimed functions.

3. Discussion.

A. General Principles.

The motion for summary judgment challenges the validity of a United States Patent. The law presumes the validity of the patent, and it is Dresser's burden to demonstrate, by clear and convincing evidence, that the patent is invalid. 35 U.S.C. § 282; Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed.Cir. 2003). Where, as here, the question is whether the patent is indefinite for failure to disclose corresponding structure, the inquiry becomes a question of law, governed by principles of claim construction. Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir.2005); Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374, 1378 (Fed.Cir. 1999) ("A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the, construer of patent claims.").

The relevant statute is 35 U.S.C. 112 ¶ 6. That statute provides:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 112 ¶ 6. In Default Proof, the Federal Circuit addressed indefiniteness in the context of a means-plus-function limitation and supplied the rules which govern the present issues:

"[I]f one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc).

. . . . .

This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6 See O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed.Cir.1997). "Fulfillment of the § 112, ¶ 16 trade-off cannot be satisfied when there is a total omission of structure." Atmel, 198 F.3d at 1382. While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed.Cir.2002).

Default Proof 412 F.3d at 1298. Bearing these rules in mind, the court turns to the issues presented in this case.

B. Whether the limitations are drafted according to § 112 ¶ 6.

The first question is whether the relevant limitations are drafted according to § 112 ¶ 6 The pertinent limitations are the "display and input task means" and the "application task means" limitations. Each uses the word "means," and cardinal rules of claim construction support Dresser's position that § 112 ¶ 6 presumptively applies. Apex v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed.Cir.2003). The burden is therefore on Touchcom to demonstrate that the presumption has been rebutted. See Apex, 325 F.3d at 1372.

The presumption may be rebutted if the claim language recites sufficient structure or material for performing the claimed function. Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1347 (Fed. Cir.2002); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996). The Federal Circuit has concluded in several cases that claim language which uses the term "means" is nonetheless outside of § 112 ¶ 6 if the language otherwise recites sufficient structure for performing the claimed function. For example, in Cole, the court held that "perforation means" recited sufficient structure (perforation) for performing the function claimed in the limitation. The court held that the limitation was outside the scope of § 112 ¶ 6 due to the use of perforation immediately before the term "means." According to the court, the word "perforation" connoted sufficient structure to one of skill in the art to remove the limitation from § 112 ¶ 6. Even though the patentee had used the word "means" several times in the claims, the court found no reason to construe these limitations pursuant to § 112 ¶ 6.

In Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364-65 (Fed.Cir. 2000), the court held that the term "second baffle means" was not subject to § 112 ¶ 6. The patent related to a fan and filter set for use in clean rooms and required in one of its limitations "a second baffle means disposed radially outwardly of said centrifugal fan means and said first baffle means, said second baffle means having inner surfaces for directing the airflow from said centrifugal fan means. . . ." The Federal Circuit, relying on Cole, held that the term "baffle" itself is a structural term. As a result, the court found the limitation outside the scope of § 112 ¶ 6.

Finally, in Allen Engineering, the court held that the terms "gearbox means," "pivot steering box means," and approximately ten other means terms were not subject to § 112 ¶ 6 because the claim language recited sufficient structure for performing the function. The court likened the case to Cole and held that only one of the limitations that used the word "means" invoked § 112 ¶ 6.

In this case, Touchcom points to this precedent and asserts that one of skill in the art would recognize that the term "task" refers to software or a software module. Moreover, Touchcom contends that "task" when modified by "display and input" or "application" connotes sufficient structure to take the case out of the jaws of § 112 ¶ 6. Touchcom bolsters its position with the argument that while the patentee used the word "means" several times, there was a modifier directly before the word. In addition, Touchcom argues that the patentee never used the terms "means for" as is typically done in patent drafting to signal a § 112 ¶ 6 limitation.

Dresser's answer to this is Altiris, Inc. v. Symantec Corp., 318 F.3d 1363 (Fed.Cir. 2003). In Altiris, the court, in the context of a software issue, distinguished Cole, Envirco, and ...