The district court had ruled claims 13-17 and 40 indefinite under 35 U.S.C. § 112, ¶ 2. The appeals court (CAFC 06-1350) liked 35 U.S.C. 112, ¶ 6.

Section 112, ¶ 6 of Title 35 of the United States Code permits an applicant to express a claim limitation as a means or step for performing a specified function without claiming the structure that performs the function:

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.

In Valmont Industries, Inc. v. Reinke Manufacturing Co., we explained that § 112, ¶ 6 permitted “broad means-plus-function language, but provided a standard to make the broad claim language more definite[: ] . . . [t]he applicant must describe in the patent specification some structure which performs the specified function.” 983 F.2d 1039, 1543 (Fed. Cir. 1993). Thus, in return for generic claiming ability, the applicant must indicate in the specification what structure constitutes the means.1 “If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid the price but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). Thus, “[i]f an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of § 112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).

The issue was a claimed "control means for automatically operating valves."

The district court began its construction of the term “control means” with the observation that if a claim element contains the term “means” and recites a function, there is a presumption that § 112, ¶ 6 applies. Biomedino, slip op. at 8. Concluding that the inclusion of the word “control” did not identify structure and thus did not overcome the presumption that the claim limitation was a means-plus-function limitation, the district court began a § 112, ¶ 6 analysis.

The only references in the specification to the “control means” are a box labeled “Control” in Figure 6 and a statement that the regeneration process of the invention “may be controlled automatically by known differential pressure, valving and control equipment.” ’502 patent col.11 ll.55-58. From this,

The specification says nothing more than that unspecified equipment may be used to control the regeneration process. The fact that one skilled in the art could envision various types of equipment capable of automatically operating valves does not change the fact that no structure capable of performing that function was disclosed by the inventor.

As a result, the court held that “[t]he failure to disclose a structure corresponding to the ‘control means’ function makes claims 13-17 and claim 40 of indefinite scope in violation of § 112, ¶ 2 of the Patent Act.” Id.

Biomedino had argued that "“control means” recites sufficient structure on its own such that it obviates the need for § 112, ¶ 6." Since "control" is a precise structure well understood, you can ignore the word "means," Biomedino conjectured; wrongly.

When a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112, ¶ 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1367, 1375 (Fed. Cir. 2003). “This presumption can be rebutted when the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety.” Id. Claims 13 and 40 recite no such structure.

The lowdown on § 112, ¶ 6 is that a bare minimum of structure must be disclosed.

Once a court concludes that a claim limitation is a means-plus-function limitation, two steps of claim construction remain: 1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function. Med. Instrumentation, 344 F.3d 1205 at 1210. If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite. See Atmel, 198 F.3d at 1378-79 (citing In re Donaldson, 16 F.3d at 1195).

While the specification must contain structure linked to claimed means, this is not a high bar: “[a]ll one needs to do in order to obtain the benefit of [§ 112, ¶ 6] is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of [§ 112,] ¶ 2.” Atmel, 198 F.3d at 1382. Additionally, interpretation of what is disclosed in the specification must be made in light of the knowledge of one skilled in the art. Id. at 1380. Thus, in order for a means-plus-function claim to be valid under § 112, the corresponding structure of the limitation “must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation. Otherwise, one does not know what the claim means.” Id. at 1382. However, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005).

The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure. Med. Instrumentation, 344 F.3d at 1212 (citing Atmel, 198 F.3d at 1382). Accordingly, a bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring “corresponding structure, material, or acts described in the specification.”

District court holding of indefiniteness affirmed.