General Statements Regarding Known Structures are Insufficient to Support Means-Plus-Function Claims

In Biomedino, LLC v. Waters Technologies Corp. (No. 2006-1350, June 18, 2007) the Federal Circuit affirms a district court’s invalidity determination based on the finding that the recited “control means for automatically operating valving” fails to satisfy the requirements of 35 U.S.C. § 112, ¶ 6. The parties agreed on the applicable claim function, as well as the fact that the only references in the specification to the “control means” are a box labeled “Control” in one of the figures, and a statement that the valving “may be controlled automatically by known differential pressure, valving and control equipment.” Thus, the issue before the Federal Circuit was whether this limited structural disclosure is sufficient to satisfy the requirements of 35 U.S.C. § 112, ¶ 6.

Based on the underlying principle that a patentee need not disclose details of structures well known in the art, the patentee argued that the inquiry should be whether one skilled in the art would have identified the relevant structure from the provided description. The Federal Circuit panel disagrees, however, and concludes that “the relevant inquiry is whether one skilled in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a [known] structure.” As such, the court finds the bare statement relating to known techniques for “automatically operating valving” is insufficient to satisfy the requirements of § 112, ¶ 6.