This case is a re-examination case with issue pertaining to § 112, ¶ 6, and when means plus function limitations should be invoked if a claim recites a function but does not elaborate a sufficient structure, material of acts within the claim itself to perform the recited function.
The patent under reexamination assigned to FLO describes a mobile computer work station for use in medical environments. FLO’s claims includes a “height adjustment mechanism” limitation, however the claimed limitation did not include further structural limitations.
FLO argued the cited art references use fixed-length vertical structures to adjust the height of their horizontal work surfaces. FLO argued this was different from the “height adjustment mechanism” that included a adjustable vertical beam. Initially, FLO appealed an Examiner’s rejection that FLO’s claims should not be interpreted as § 112, ¶ 6 because the claims do not recite “means for language.”
On appeal, 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. On that basis, the Board upheld the Examiner’s rejection.
The court disagreed with the Board’s analysis that the “height adjustment mechanism” limitation as recited in FLO’s claims should have invoked 35 U.S.C. § 112, ¶ 6. The court reasoned that the words “means” creates a rebuttable presumption that the drafter intent 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). The court also stated that “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)).
The court ruled that the presumption against a means-plus-function construction of a claim is a hard presumption to overcome, and if a claim drafter did not include the therm”means” the court is unwilling to apply § 112, ¶ 6 without a showing the claim is devoid of anything that can be construed as structure. In this case, the court reasoned that because the term “mechanism” is a noun, that a “mechanism” provides support for a structure. Therefore, the court held that the term “height adjustment mechanism” as used in FLO’s patent implies sufficient structural limitations to overcome the means-plus-function presumption.
The court further held that because the claims do not recite a length adjustable vertical beam, this limitation would not be read into the claims. As a note, FLO did file at least one continuation with this limitation recited in the claims.
AUSTIN PATENT ATTORNEY TAKEAWAYS:
1. The means-plus-function presumption is a very hard one to overcome. If a claim does not recite the term “means” and there are any nouns in the recited limitation, it is unlikely that a claim will be read as a means plus function claim.