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September 13, 2006

Aesthetic Correction

MIT sued Abacus Software, Corel, Microsoft, and Roxio for infringing 4,500,919, claiming a color processing system for making copies, specifically, using the right color combination from a limited palette of inks. The district court found non-infringement based on a contested claim construction. The CAFC differed on the construction (05-1142).

Though there was a lot of pleading issues on appeal, the CAFC stuck to the claim construction as the only relevant issue regarding non-infringement.

1. A system for reproducing a color original in a medium using a selected multiplicity of reproduction colorants, the system comprising in serial order:
a. a scanner for producing from said color original a set of three tristimulus appearance signals dependent on the colors in said original;
b. display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals; and
c. colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproduction colorants to produce in said medium a colorimetrically-matched reproduction.

The appeals court wanted to know what the accused devices were as an aid to claim construction. It's a form of jurisprudence cheating, putting the cart before the horse. The claims should be construed in light of the specification and other evidence applicable to the patent at the time of filing, such as dictionary definitions, without the taint of accused product(s). In this case, the cheat sheet wasn't available, and the court proceeded.

Even with respect to the claim construction issues on which the judgment is based we perceive a problem with the mechanism by which this case has been litigated. As in Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348 (Fed. Cir. 2006), the record does not disclose the nature of the accused devices, and our rulings on claim construction in this case unfortunately must be made without knowledge of the accused devices. See id. at 1350 (“Without knowledge of the accused products, this court cannot assess the accuracy of the infringement judgment under review and lacks a proper context for an accurate claim construction.”); see also Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006) (“[I]t is appropriate for a court to consider the accused device when determining what aspect of the claim should be construed.”). Moreover, the stipulated judgment does not identify which of the many claim construction rulings are dispositive. While it is highly undesirable to consider these issues in the abstract, here as in Lava Trading, we have proceeded to do so.


Three claim terms are relevant to this appeal: “scanner,” “colorant selection mechanism,” and “aesthetic correction circuitry.”

The district court concluded that the scanner must have “relative movement between the scanning element and the object being scanned.” We agree.

MIT had argued for a broader construction, that a camera could be scanner; rather obvious overreaching. The specification had not defined scanner so broadly, and dictionary definitions supported a "moving beam of light" construction.

For “colorant selection mechanism,” construction as a means-plus-function limitation would be limiting, and MIT argued against it, to no avail. The specification hadn't fleshed out what "colorant selection" could have meant other than a means label.

The court construed the term “colorant selection mechanism” as a means-plus-function limitation, and held that the recited functions are “receiving said modified appearance signals” and “selecting corresponding reproduction signals representing values of said reproduction colorants to produce in said medium a colorimetrically-matched reproduction.” The court concluded that the structure that performs these functions is the components of the “ink correction module (ICM).”

The phrase “colorant selection mechanism” is presumptively not subject to 112 ¶ 6 because it does not contain the term “means.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). However, 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.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

We agree with the district court’s conclusion that the presumption here is overcome and that the phrase “colorant selection mechanism” should be construed as a means-plus-function limitation. The generic terms “mechanism,” “means,” “element,” and “device,” typically do not connote sufficiently definite structure. In Personalized Media Commc’ns, LLC v. Int’l Trade Com’n, 161 F.3d 696 (Fed. Cir. 1998), we addressed the claim term “digital detector.” We contrasted the term “detector,” which recited sufficient structure to avoid 112 ¶ 6, with “generic structural term[s] such as ‘means,’ ‘element,’ or ‘device,’” which do not. Id. at 704. Similarly, in Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), we recognized that Section 112 ¶ 6 does not apply to “a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” Id. at 1360.

Here the patentee used “mechanism” and “means” as synonyms. See ‘919 patent, claim 3, col. 15 l. 51 (referring to “colorant selection means”) (emphasis added); id., claim 14, col. 17 ll. 1-2 (same). At least one dictionary definition equates mechanism with means. See The Random House Webster’s Unabridged Dictionary 1193 def. 2 (2d ed. 1998) (defining “mechanism” as “the agency or means by which an effect is produced or a purpose is accomplished”); see also The Random House Dictionary of the English Language – The Unabridged Edition 889 (1973) (same). The term “mechanism” standing alone connotes no more structure than the term “means.”

Claim language that further defines a generic term like “mechanism” can sometimes add sufficient structure to avoid 112 ¶ 6. For example, in Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), which involved a mechanical device, we held that 112 ¶ 6 did not apply to the term “detent mechanism,” because “the noun ‘[d]etent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.” Id. at 1583. The court recited several dictionary definitions for “detent,” including “a mechanism that temporarily keeps one part in a certain position relative to that of another, and can be released by applying force to one of the parts.” Id. (internal quotation marks and citations omitted). These definitions connoted sufficient structure to avoid 112 ¶ 6. We also concluded that “[t]he fact that a particular mechanism—here ‘detent mechanism’—is defined in functional terms is not sufficient to convert a claim element containing that term into a ‘means for performing a specified function’ within the meaning of [112 ¶ 6]” because “[m]any devices take their names from the functions they perform.” Id.

In contrast, the term “colorant selection,” which modifies “mechanism” here, is not defined in the specification and has no dictionary definition, and there is no suggestion that it has a generally understood meaning in the art. We therefore agree with the district court that “colorant selection mechanism” does not connote sufficient structure to a person of ordinary skill in the art to avoid 112 ¶ 6 treatment.

On the other foot, the CAFC found "aesthetic correction circuitry" to have enough substance to elude the straightjacket of mean-plus-function construction.

Finally, the court held that “aesthetic correction circuitry” is a means-plus-function limitation, that the recited function is “introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals,” and that the structures that perform this function are the five components that comprise the Color Translation Module (“CTM”).

In contrast to the term “mechanism,” dictionary definitions establish that the term “circuitry,” by itself, connotes structure.

In arguing to the contrary, the dissent appears to misapprehend the strength of the presumption that applies when the term “means” does not appear in the claim. As we stated in Lighting World, 382 F.3d at 1362, “[W]e have seldom held that a limitation not using the term ‘means’ must be considered to be in means-plus-function form,” and “the circumstances must be [unusual] to overcome the presumption . . . .” So too the dissent erroneously suggests that claims cannot avoid means-plus-function treatment unless the claim term denotes a specific structure. But “[i]n considering whether a claim term recites sufficient structure to avoid application of section 112 ¶ 6, we have not required the claim term to denote a specific structure. Instead, we have held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Id. at 1359-60. Here, technical dictionaries supply ample evidence that the claim term designates structure.

Microsoft urges that “circuitry” should be limited to hardware whereas MIT urged below that it should include both hardware and software... The parties agree that the CTM is the “aesthetic correction circuitry” of the ‘919 patent... Although the specification suggests that certain computations performed by the CTM can be accomplished with either hardware or software, this reference does not alter the specification’s repeated description of the circuit itself as involving hardware... We conclude that the term “aesthetic correction circuitry” is clearly limited to hardware... Having decided that 112 ¶ 6 does not apply to the “aesthetic correction circuitry” limitation and that the term does not include software, we leave it to the district court to define this term with further particularity.

Chief Judge Michel had a strongly reasoned dissent, that the district court got it right in deciding "aesthetic correction circuitry" as a means-plus-function limitation, and the appeals court wrong-footed.

The district court correctly interpreted “aesthetic correction circuitry” as a means-plus-function claim despite the absence of the term “means for” in view of the presence of functional language because the limitation fails to recite sufficiently definite structure, as our precedent requires. Thus, the presumption against application of section 112, paragraph 6 was overcome. Indeed, on this record, I find it overcome as a matter of law.

The parties agree that “the term ‘circuit[ry],’ by itself connotes some structure” to one skilled in the art. Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (emphasis added). The issue, however, is whether the “aesthetic correction circuitry” limitation “recite[s] sufficiently definite structure,” id. at 1372 (emphasis added); accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319 (Fed. Cir. 2004), which is required to avoid section 112, paragraph 6 in a claim using functional language, even in the absence of “means for.”

This “definite structure” requirement is well-established in our precedent. “To invoke this statute [section 112, paragraph 6], the alleged means-plus-function claim element must not recite a definite structure which performs the described function.” Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); see also B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“Because this limitation . . . does not recite definite structure in support of its function, it is subject to the requirements of 35 U.S.C. § 112, ¶ 6 . . . .”); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998) (“In deciding whether either presumption [‘means for’ with stated function presumes that section 112, paragraph 6 applies, while no ‘means for’ with stated function presumes that section 112, paragraph 6 does not apply] has been rebutted, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6.”); Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000) (“[T]he focus remains on whether the claim . . . recites sufficiently definite structure.”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (“Life Fitness can rebut this presumption if it demonstrates that the claim term fails to ‘recite sufficiently definite structure.’”); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (“The presumption that a limitation lacking the term ‘means’ is not subject to section 112 ¶ 6 can be overcome if it is demonstrated that the ‘claim term fails to recite sufficiently definite structure.’”) (internal quotations omitted). Indeed, section 112, paragraph 6 is rooted in the definiteness requirement of section 112, paragraph 2: “Congress has provided this statute [section 112, paragraph 6] as a specific instruction on interpretation of the type of claim which otherwise might be held to be indefinite.” Data Line Corp. v. Micro Techs., Inc., 813 F.2d 1196, 1201 (Fed. Cir. 1987); accord Jonsson v. Stanley Works, 903 F.2d 812, 819 (Fed. Cir. 1990); see also Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed. Cir. 1991) (“Absent section 112(6), claim language which requires only a means for performing a function might be indefinite.”). Such a claim would, of course, be invalid under section 112, paragraph 2. Although both Apex and Linear, relied on dispositively and exclusively by the majority, found sufficiently definite structure in the claim language, both are distinguishable from the instant case, in which the claim language is dramatically different.

Indeed, “aesthetic correction” itself may be solely functional language. For example, we were shown no evidence that any technical dictionaries suggest to the artisan a sufficiently definite structure for “aesthetic correction circuitry” or even list such a term. Nor did experts from either side opine that one skilled in the art would understand “aesthetic correction circuitry” to connote sufficiently definite circuit structure.

Posted by Patent Hawk at September 13, 2006 12:50 PM | Claim Construction


Today in Massachusetts Institute of Technology v. Abacus Software, the court yet again reverses a trial court’s claim construction; it yet again involves a set of lengthy opinions; and it yet again has a dissent by the Chief Judge.

(1) When is a non-"means" limitation legally a "means" limitation: A focal point, here, was the construction of a claim not using "means" language but putting the relevant element under 35 USC § 112, ¶ 6, "means" interpretation. It is certainly bizarre enough to interpret a "means" term stated as such. The difficulties with determining when to give a non-means limitation a "means" interpretation, as here, geometrically confuses the issue even further.

(2) Dictionaries in Lieu of Unavailable Intrinsic Evidence: The court noted that where the specification provides no definition of claim terminology and there was but one embodiment disclosed, " [u]nder such circumstances it is appropriate … to look to dictionary definitions of the terms." The court quotes with approval from Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005) (en banc), for the proposition that "[d]ictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words and have been used both by our court and the Supreme Court in claim interpretation."

(3) The True Meaning …Years Ago at the time of Filing: Where dictionaries provide no help, then, "[u]nder such circumstances, [the court] must determine what meaning the term had in the relevant art at the time the patent issued by looking to other sources. This follows from our obligation to give the words of a claim ‘their ordinary and customary meaning, [which] . . . is the meaning that the [words] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.’" The court cites Phillips, 415 F.3d at 1312-13; and quotes from Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), for the proposition that "[i]n construing claims, the courts focus on ‘what one of ordinary skill in the art at the time of the invention would have understood the term to mean.’"

(4) The Fact Driven Analysis of Claim Construction: Clearly, any claim construction of the type envisioned in Massachusetts is heavily fact driven, to understand precisely what a worker skilled in the art would have thought a claim term meant many years ago – at the time the invention was made. To have a de novo review – as required by the en banc precedent of Cybor defies logic and common sense.

Posted by: Hal Wegner at September 13, 2006 3:18 PM