Robert Bosch, LLC v. Snap-On, Inc.

In the context of addressing claim indefiniteness under § 112, ¶ 2, for lack of disclosure correspondence to a means plus function claim element (under § 112, ¶ 6) the U.S. Court of Appeals for the Federal Circuit affirmed the district court, concluding the claim terms “program recognition device” and “program loading device” are means-plus-function elements lacking the requisite corresponding structures in the specification.  Robert Bosch, LLC v. Snap-On, Inc., Case No. 14-1040 (Fed. Cir., Oct. 14, 2014) (Prost, J.).

Bosch owns a patent directed to a diagnostic tester that determines whether a computerized control unit in a motor vehicle needs to be reprogrammed.  The single independent claim called for a “program recognition device” and a “program loading device,” the only terms at issue.  According to the claim, a program version within the control unit is queried and recognized “by means of” the program recognition device.  If the program is recognized and found to be out of date, the latest and most current version is loaded by the program loading device.  The specification contained no figures or descriptions of either of these devices.

In the ensuing litigation, after Bosch sued Snap-On for patent infringement, Snap-On asserted that the disputed terms were means-plus-function terms under § 112, ¶ 6 and were indefinite because the specification lacked disclosure of corresponding structure.  The district court concluded a rebuttable presumption that the term “program recognition device” invoked § 112, ¶ 6 based on the presence of the phrase “by means of” in the claim.  The district court found that this presumption was not overcome and that the term was indefinite for failure to disclose corresponding structure.  For the term “program loading device,” the court started from a presumption that the term did not invoke § 112, ¶ 6 (based on the lack of the word “means”) but still concluded it was a § 112, ¶ 6 claim element and indefinite.  The parties stipulated to a final judgment of invalidity, and this appeal followed.

The Federal Circuit found that the district court erred in applying the presumption that “program recognition device” is a means-plus-function term.  The Court indicated that when first reciting the term, the claim does not use the word “means” at all, much less the classic phrase “means for.”  The Court also indicated it was not aware of any precedent stating that the presumption is triggered by a claim’s use of the expression “by means of.”  It was noted that in past Federal Circuit decisions, the presumption was applied when a claim used the word “means” as a noun, such as a “means” for doing something.

However, the Federal Circuit found that the district court’s error was harmless, since even though Bosch was entitled to a presumption against means-plus-function claiming, the terms “program recognition device” and “program loading device” still invoke § 112, ¶ 6.  According to the Court, “[t]he claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art.”  In its finding of a lack of structure, the Court noted its previous decision that the word “device” is a non-structural, “nonce” word, and that the other words do nothing more than identify functions for the “device” to perform.  Here, the specification only included functional descriptions with no mention of what the devices consist of or any “structural guidance.”

Bosch relied on Inventio in trying to avoid invoking § 112, ¶ 6, since in that case the Federal Circuit found the term “modernizing device” fell outside § 112, ¶ 6.  The Court distinguished Inventio, noting that in that case there was “extensive structural description in the intrinsic record.”  Bosch also relied on its expert witness, who asserted that the two claim terms were generally understood to have structural meanings in the art.  The Court was not persuaded, indicating that the expert’s statements were conclusory and simply repeated functions.  The Court also stated that merely listing examples of possible structures is insufficient to avoid invoking § 112, ¶ 6.