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“Means To” Claim Language and the Bosch vs. Snap-On Decision

Means-plus-function language has been a highly contested area in the realm of proper claims drafting techniques. Means-plus-function methodology generally includes formally descriptive language as a means for reciting a particular component or method of a claim. Means-plus-function enables a claims drafter to attempt to provide a general description of the function of the invention without citing particular structural components, thereby providing broad coverage of many possible structural elements. To better understand this concept, consider a vehicle. You might simply call it a car, but it may also be described as a form of transportation powered by an engine and supported by four wheels in contact with the ground. Such is the case with means-plus-function language.

Means-plus-function language is covered and governed by Title 35, Section 112 of US Code which states

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.

As seen below, claims may be held as invalid as indefinite without proper supporting description of the structures that would accomplish the claimed elements in the specification. As a result, the subjectivity of means-plus-function often comes into play, leading to litigation and often narrow interpretations of the claims, thereby reducing the overall coverage of the claim language.

The Court of Appeals for the Federal Circuit recently issued a unanimous decision in the claims case of Robert Bosch, LLC. vs. Snap-On Inc. (Case No. 2014-1040) holding all claims invalid. An initial district court found all of the Bosch claims invalid for contained means-plus-function limitations, without proper explanation in the specification regarding the structure which accomplishes the means function. Bosch asserted a patent for an “external diagnostic tester for motor vehicles” in which the tester determines whether the computerized control unit in a motor vehicle needs to be reprogrammed. The abstract states that

The external diagnostic tester is equipped with a program recognition and program loading device. The program version contained in the connected control unit is queried and recognized using the program recognition device. Then, if the program available in the motor vehicle and recognized via the diagnostic/test plug, available in the connected control unit of the motor vehicle is not stored in the latest and most current version, the respective latest version is loaded by the program loading device into the program storage device of the corresponding control unit.

Snap-On asserted that the program recognition device and the program loading device are invalid according to 35 U.S.C. 112, paragraph 6, since the terms invoke means-plus-function language and there is not adequate description of the structures which would accomplish the task in the specification. Claim 1 can be seen below.

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 date 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.

After Bosch sued Snap-On (and later Drew Technologies, Inc.) for infringement of claims from Bosch Patent No. 6,782,313, the district court found the ‘313 claims indefinite. Bosch immediately appealed the district court’s decision. On appeal, the Court of Appeals for the Federal Circuit found that while the claims do not directly recite “means” or “means-to” language, that the terms “program recognition device” and “program loading device” were described using only functional language and that no specific structure was recited to accomplish the functional task. A final decision was made to find all claims of the ‘313 patent invalid as indefinite.

As you can see from Bosch vs. Snap-On, claim language needs only to suggest or imply means-plus-function language to invoke Section 112, paragraph 6 of the US Code, whereby a specific structure must be thoroughly described to accomplish the function. Failure to do so may result in all pertinent claims being held invalid as indefinite. When drafting claims, it is therefore necessary to carefully approach means-plus-function claim language and to ensure that the specification properly supports the claims with specific structure and description. Additionally, it is important to consider whether language may be considered to invoke means plus function language even when not using the language “means for”.

To avoid the uncertainty of means-plus-function language however, it is recommended to avoid means-plus-function language altogether. As a general rule of thumb, drafting a claim to recite specific structure for accomplishing a design function directly in the claim may ensure a claim is held valid during litigation. In regards to seeking as broad of coverage as possible while claims drafting, it may prove to be a safe bet as well to avoid means-plus-function language since the claim will stand a higher chance in litigation without relying on supplementary and adequate support in the specification for “means” or implied “means” language in the claims. When it is believed necessary to draft a claim with the use of means-plus-function language, it is good practice to provide alternate claims which recite associated structure without invoking means-plus-function language to provide a backup measure in the event the means plus functions claims are held invalid or overly narrow in scope.

If you have any questions regarding: infringement of existing patents, analyzing the patent scope of claims, drafting claims, responding to patent office actions, prosecuting your patent application, conducting interviews with patent examiners, branding, trademarks, patent planning or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC

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