Maurice Mitchell Innovations v. Intel (CAFC 2007-1108)

Mitchell, looking for a payday from Intel for 4,875,154, hitched his patent pony in the Eastern District of Texas. The judge didn't cotton to the nag, and ran Mitchel out of town, because Mitchell had a "means for causing" and "switch means" claim limitations that were horse hockey - no corresponding structure disclosed in the specification.

35 U.S.C. § 112 - Specification

¶ 1 - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

¶ 2 - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

¶ 6 - 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.

On appeal, the CAFC lays out a little case law for presumption of validity, and indefiniteness - when claim lights are on, but nobody's home.

"A patent issued from the United States Patent and Trademark Office (PTO) bears the presumption of validity under 35 U.S.C. § 282. An accused infringer, therefore, must prove patent invalidity under the clear and convincing evidentiary standard." Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004). Specifically, "[t]he claims as granted are accompanied by a presumption of validity based on compliance with, inter alia, § 112 ¶ 2." S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001).

As stated in § 112 ¶ 2, "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Claims "particularly point[ ] out and distinctly claim[ ]" the invention when one of ordinary skill in the art would understand the scope of the invention when the claims are read in conjunction with the specification. Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005); 35 U.S.C. § 112 ¶ 2. But, if an applicant "employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language." In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); 35 U.S.C. § 112 ¶ 6. Therefore, "[i]f 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." Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).

Mitchell had pointed to a reference from the specification for supporting documentation, but both courts found the prior art reference "both too broad and not linked to the "means for causing" limitation."

The mere mention of a complicated integrated circuit, comprised of hundreds if not thousands of circuits, is much too broad to sufficiently indicate the precise "means for causing" structure to a person of ordinary skill in the art. See Med. Instrumentation & Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003) ("It is important to determine whether one of skill in the art would understand the specification itself to disclose the structure, not simply whether that person would be capable of implementing that structure.").

Mitchell attempted to "to identify structure in a variety of generalized passages in the specification," but nothing specific to hang the means hat on.

"[I]n order for a claim to meet the particularity requirement of ¶ 2, the corresponding structure(s) of a means-plus-function 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." Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). Thus, the statute requires more than just the possibility that an artisan of ordinary skill may be able to figure out the corresponding structure. The quid pro quo for using a means-plus-function limitation requires specificity in reciting structure and linking that structure to the limitation. Id. Mitchell does not carry out its part of the quid pro quo bargain.

Mitchell's claims went down to indefiniteness.

The Mitchell case was non-precedential, as it merely followed the line recently laid in the Biomedino case.