Case: 20-1975 Document: 36 Page: 1 Filed: 09/09/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TEAM WORLDWIDE CORPORATION,
Appellant
v.
INTEX RECREATION CORP.,
Appellee
______________________
2020-1975
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2019-
00015.
______________________
Decided: September 9, 2021
______________________
ROBERT M. HARKINS, JR., RuyakCherian LLP, Berke-
ley, CA, argued for appellant. Also represented by
TIMOTHY E. BIANCHI, Schwegman Lundberg & Woessner,
PA, Minneapolis, MN.
JOEL SAYRES, Faegre Drinker Biddle & Reath LLP,
Denver, CO, argued for appellee. Also represented by R.
TREVOR CARTER, REID E. DODGE, ANDREW M. MCCOY, Indi-
anapolis, IN.
______________________
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2 TEAM WORLDWIDE CORPORATION v.
INTEX RECREATION CORP.
Before NEWMAN, TARANTO, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Team Worldwide Corporation (TWW) appeals a post-
grant review decision of the Patent Trial and Appeal Board
(Board) finding claims 1–5 of U.S. Patent No. 9,989,979
(’979 patent) unpatentable as indefinite under 35 U.S.C.
§ 112(b). 1 The Board construed the claim term “pressure
controlling assembly” as a means-plus-function limitation
under § 112(f) and determined the patent failed to disclose
structure to perform each recited function of the assembly
limitation, as claimed. The ’979 patent’s filing date is Au-
gust 29, 2014, making it subject to the American Invents
Act (AIA) unless it can properly claim priority from an ear-
lier-filed, pre-AIA patent application. The Board found the
specification, shared with an earlier pre-AIA patent appli-
cation from which the ’979 patent claims priority, lacks ad-
equate written description to support that the inventor
possessed the claimed “pressure controlling assembly” at
the filing date of either application. The Board therefore
concluded that the challenged claims are eligible for post-
grant review as they could not claim priority from the pre-
AIA application. We affirm.
BACKGROUND
A
TWW filed the application that issued as the ’979 pa-
tent on August 29, 2014. The patent is directed to an “in-
flating module” that automatically maintains the air
pressure in an inflatable device, e.g., an air mattress,
1 As the grounds for unpatentability at issue here
are premised on the ’979 patent being eligible for post-
grant review and thus governed by the America Invents
Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2011), we refer
to the AIA version of § 112 in this opinion.
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INTEX RECREATION CORP.
within a given range. See ’979 patent at Abstract. The ’979
patent briefly refers to the inflating module having a “pres-
sure controlling assembly” that “monitor[s] air pressure in
the inflatable object,” “automatically activate[s] [a] supple-
mental air pressure providing device when . . . the air pres-
sure inside the inflatable object decreases below a
predetermined threshold,” and “control[s] the supple-
mental air pressure providing device to provide air pres-
sure to the inflatable object so as to maintain the air
pressure of the inflatable object within a predetermined
range.” Id. at col. 1 l. 66–col. 2 l. 15 and claim 1. Claim 1
of the ’979 patent, the only independent claim at issue, is
reproduced below.
1. An inflating module adapted to an inflatable
object comprising an inflatable body, the inflating
module used in conjunction with a pump that pro-
vides primary air pressure and comprising:
a pressure controlling assembly configured to mon-
itor air pressure in the inflatable object after the
inflatable body has been inflated by the pump; and
a supplemental air pressure providing device,
wherein the pressure controlling assembly is con-
figured to automatically activate the supplemental
air pressure providing device when the pressure
controlling assembly detects that the air pressure
inside the inflatable object decreases below a pre-
determined threshold after inflation by the pump,
and to control the supplemental air pressure
providing device to provide supplemental air pres-
sure to the inflatable object so as to maintain the
air pressure of the inflatable object within a prede-
termined range.
’979 patent at claim 1 (emphases added).
The ’979 patent specification describes the pressure
controlling assembly almost exclusively in functional
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4 TEAM WORLDWIDE CORPORATION v.
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terms. See id. at Abstract; id. at col. 1. l. 66–col. 2. l. 15.
One sentence of the specification, however, states that
“[a]fter the supplemental air pressure providing device is
in a standby mode, a pressure controlling assembly
121/122 as described starts monitoring air pressure in the
inflatable object.” Id. at col. 4 ll. 48–51. The specification
makes no further mention of a pressure controlling assem-
bly and provides no explanation of what elements 121 and
122 are, beyond what is shown in Figure 2a:
The ’979 patent claims priority from U.S. Patent Appli-
cation No. 13/112,847 (’847 application), filed May 20,
2011. As filed, the ’847 application had a disclosure nearly
identical to that in the ’979 patent, compare ’979 patent
with J.A. 1096–98, though the ’847 application did not as-
sociate the pressure controlling assembly with elements
121 and 122. See J.A. 1097, 1099–1103. During the pros-
ecution of the ’979 patent, the applicant, at the request of
the examiner, edited the specification of the ’979 patent to
associate elements 121/122 with the pressure controlling
assembly. See J.A. 1189.
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INTEX RECREATION CORP.
The ’847 parent application and ’979 patent each claim
priority from a Chinese patent application, CN
201010186302 (CN ’302 application), filed May 21, 2010.
Despite the priority claims, neither the ’847 application nor
the ’979 patent incorporate the contents of the CN ’302 ap-
plication by reference. The CN ’302 application contains
the same figures as the ’847 application and the ’979 pa-
tent, but provides considerably more detail about the rele-
vant pressure control element; it describes how an “air
pressure control mechanism,” including “air valve plate
121” and “chamber 122,” moves in response to changing air
pressure within the attached inflatable device. See J.A.
2137. The CN ’302 application also describes the operation
of a switch 13, disclosing that “[w]hen the air pressure
value inside the inflatable product is greater than the reset
mechanism’s preset value, the air pressure control mecha-
nism shifts upward, the second switch 13 is closed by the
projection pressing against it, and the automatic reinfla-
tion mechanism halts reinflation.” J.A. 2136. In contrast,
“[w]hen the air pressure value inside the inflatable product
is less than the reset mechanism’s preset value, the air
pressure control mechanism shifts downward, the projec-
tion is removed from second switch 13 causing it to discon-
nect, and the automatic reinflation mechanism starts
reinflation.” Id. Neither the structural descriptions of the
“air pressure control mechanism” or the switch 13 nor their
operation are included in the shared specifications of the
’847 application and ’979 patent.
B
Intex Recreation Corp. (Intex) filed a petition for post-
grant review of claims 1–5 of the ’979 patent. Intex argued
that the ’979 patent was eligible for post-grant review be-
cause the ’847 parent application failed to provide written
description support for the challenged claims, and there-
fore the 979 patent claims cannot properly claim priority to
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6 TEAM WORLDWIDE CORPORATION v.
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a pre-AIA application. 2 Intex alleged claims 1–5 were un-
patentable under § 112(b) because “pressure controlling as-
sembly” was a means-plus-function claim term and the
specification failed to identify structure corresponding to
each of that term’s functions recited in the claims. Intex
also asserted that the claims were unpatentable under
§ 112(a) for failing to comply with the written description
requirement due to the specification’s lack of disclosure for
the pressure controlling assembly claim element. 3
In its Final Written Decision, the Board determined
that Intex had met its burden to show that the ’979 patent
is eligible for post-grant review and that claims 1–5 are un-
patentable. See Intex Recreation Corp. v. Team Worldwide
Corp., PGR2019-00015, 2020 WL 2071543, at *1 (P.T.A.B.
Apr. 29, 2020) (Board Decision). The Board recognized that
the patent’s eligibility for post-grant review was a thresh-
old issue because, although the application that issued as
the ’979 patent was filed after the effective date of the AIA,
it claimed priority to the pre-AIA ’847 application. See id.
at *4. The Board noted that the ’979 patent would not be
eligible for post-grant review “if the claimed subject matter
2 Post-grant review is only available for patents sub-
ject to the first-to-file provisions of the AIA. See AIA
§ 6(f)(2)(A). In other words, post-grant review is available
for patents containing at least one claim with an effective
filing date after the effective date of the AIA—March 16,
2013. Because the ’979 patent was filed after March 16,
2013, post-grant review is available unless each of its
claims is supported by the ’847 application from which it
claims priority.
3 Intex asserted several other grounds for unpatent-
ability, including anticipation and obviousness in view of
several prior art references. The Board did not reach these
prior-art based grounds, J.A. 73, and they are not at issue
on appeal.
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INTEX RECREATION CORP.
complies with the written description and enablement re-
quirements of § 112(a) for an ancestor application filed
prior to March 16, 2013.” Id.
To determine whether the challenged claims had writ-
ten description support in the ’847 application, 4 the Board
first construed the claims. See id. at *5 (“Where the claims
have not been properly construed, the full scope of the
claim is unknown, thereby rendering baseless any determi-
nation of written description support in an earlier patent.”
(quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757
F.3d 1358, 1365 (Fed. Cir. 2014))).
The Board construed the term “pressure controlling as-
sembly” as invoking § 112(f). Applying Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
banc), the Board found that the presumption against con-
struing a claim term lacking the word “means” as invoking
§ 112(f) was overcome, concluding that, in view of the rec-
ord, the claim term in question lacks a sufficiently definite
4 The Board did not analyze whether the CN ’302 ap-
plication provided written description support for the
claims. See id. at *5 n. 8. As it correctly noted, each appli-
cation in the priority chain must have written description
support for the claims. See Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1571 (Fed. Cir. 1997) (“In order to gain the
benefit of the filing date of an earlier application under
35 U.S.C. § 120, each application in the chain leading back
to the earlier application must comply with the written de-
scription requirement of 35 U.S.C. § 112.”). Thus, “[i]f the
’847 application does not provide adequate written descrip-
tion support for any claim of the ’979 patent, then the ’847
application has broken the priority chain with respect to
that claim and any disclosure in the CN ’302 application
cannot cure that break.” Board Decision at *5 n.8.
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8 TEAM WORLDWIDE CORPORATION v.
INTEX RECREATION CORP.
meaning to persons of skill in the art. Board Decision at
*8.
The Board then identified the four claimed functions of
the “pressure controlling assembly”:
(1) monitoring air pressure in the inflatable object
after the inflatable body has been inflated by the
pump; (2) detecting that the air pressure inside the
inflatable object decreases below a predetermined
threshold after inflation by the pump; (3) automat-
ically activating the supplemental air pressure
providing device when the pressure controlling as-
sembly detects that the air pressure inside the in-
flatable object decreases below the predetermined
threshold after inflation by the pump; and (4) con-
trolling the supplemental air pressure providing
device to provide supplemental air pressure to the
inflatable object so as to maintain the air pressure
of the inflatable object within a predetermined
range.
Id. at *20.
The Board next attempted to identify the structure dis-
closed in the specification that performed each function.
Focusing on the third function, “automatically activating
the supplemental air pressure providing device,” the Board
concluded that the patent failed to disclose any correspond-
ing structure for its performance. See Board Decision at
*23. Specifically, the Board noted that TWW’s proposed
structure for this function hinged entirely on its expert’s
conclusory testimony about how a skilled artisan would in-
terpret Figures 1 and 2a of the patent. See id. (“Dr. Stevick
provides no basis for the testimony and the testimony is not
supported by figures.”). Dr. Stevick’s theory relied on a
skilled artisan understanding element 13 in Figure 1 to be
a limit switch that activates the supplemental air pressure
providing device. See J.A. 2864–65. Yet neither the ’979
patent nor the ’847 application describes element 13 as a
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limit switch. And Dr. Stevick’s testimony failed to provide
any basis for his assertion. See Board Decision at *23 (“Dr.
Stevick provides no testimony in his declaration to support
his opinion that item 13 represents a limit switch.”); J.A.
2479 (opining that element 13 is a limit switch because
“[w]hy else would you put it there?”); see also Board Deci-
sion at *24.
Having construed “pressure controlling assembly” as
not limited by any disclosed structure in the ’979 patent (at
least as to the required function of “automatically acti-
vat[ing] the supplemental air pressure providing device”), 5
the Board returned to determining whether the ’847 appli-
cation provided written description support for that claim
limitation such that the challenged claims could rely on the
’847 application’s priority date and thereby render the ’979
patent ineligible for post-grant review. See Board Decision
at *24–26. For reasons similar to its finding that the ’979
patent failed to describe corresponding structure for the
“pressure controlling assembly,” the Board found that the
substantively identical ’847 application lacked the written
description needed to establish that the inventors were in
possession of a “pressure controlling assembly” that “auto-
matically activates [a] supplemental air pressure providing
device.’” See id. at *26 (“We do not agree with Patent
Owner that the cited sections of the ’847 application dis-
close to a [skilled artisan] that limit switches are used by
the ‘pressure controlling assembly’ to automatically oper-
ate the supplemental air pressure providing device.”).
5 See, e.g., ePlus, Inc. v. Lawson Software, Inc., 700
F.3d 509, 519 (Fed. Cir. 2012) (“There is therefore nothing
in the specification to help cabin the scope of the functional
language in the [pressure controlling assembly] element:
The patentee has in effect claimed everything that [may
automatically activate a supplemental air pressure provid-
ing device] under the sun.”).
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Thus, the Board found that the ’979 patent was eligible for
post-grant review. See id. (“Accordingly, we find that a
[skilled artisan] would not have understood that the pa-
tentee was in possession of an invention where item 121
and element 122 (and other depicted, but not described,
items in the figures of the ’847 application) form an assem-
bly that can perform all of the recited functions of the pres-
sure controlling assembly.”). 6
Based on the foregoing analysis, the Board concluded
that challenged claims 1–5 were (1) eligible for post-grant
review, (2) unpatentable as indefinite under § 112(b) for
6 While the Board observed that the patentee’s
amendment to the ’979 specification added a detail that the
’847 application had not expressly stated in that it associ-
ated elements 121 and 122 with the pressure controlling
assembly, the Board’s rejection of TWW’s priority claim
makes clear that it did not rely on that amendment—or any
arguments related to new matter being added to the ’979
patent specification—to reach its no priority conclusion. In
the same vein as its indefiniteness analysis for “pressure
controlling assembly,” the Board found that the ’847 parent
application, like the ’979 patent specification, “fails to
demonstrate that the inventors were in possession of a
‘pressure controlling assembly’ that ‘automatically acti-
vate[s] the supplemental air pressure providing device’ as
required by claim 1.” See Board Decision at *25. Moreover,
the Board separately concluded that the ’979 patent—
which contains the added disclosure associating elements
121 and 122 with the pressure controlling assembly—also
lacked written description support for the pressure control-
ling assembly. See id. at *29. Thus, even assuming the
’847 application was originally filed with the matter subse-
quently included via amendment, the Board’s conclusion
that it did not provide written description support for the
claims of the ’979 patent would have been unchanged.
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failing to disclose structure for performing each of the re-
cited functions for the claimed pressure controlling assem-
bly, and unpatentable for failure to meet the written
description requirement under § 112(a). See id. at *26–27,
29.
TWW timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
TWW raises numerous challenges to the Board’s un-
patentability determination. The thrust of TWW’s argu-
ments is that the Board erroneously construed “pressure
controlling assembly” as invoking § 112(f) and, even if so
construed, erred in determining that the ’979 patent fails
to disclose sufficient structure to perform its claimed func-
tions, thereby rendering the claims indefinite. As TWW’s
arguments as to how the ’979 patent or ’847 application
provide written description support for the “pressure con-
trolling assembly” are the same as its indefiniteness argu-
ments, we, like TWW, treat the issue of eligibility for post-
grant review as rising or falling with the § 112(b) issues. 7
Thus, we consider whether the Board erred in construing
“pressure controlling assembly” as a means-plus-function
limitation invoking § 112(f) and determining that the ’979
patent fails to describe structure to perform each of its re-
cited functions.
A
We review issues of claim construction, including
whether a claim term invokes § 112(f), de novo. See
7 See, e.g., Appellant’s Br. 54–55; Oral Arg. at 2:05–
2:55 (acknowledging that TWW’s “argument about the un-
availability of [post-grant review] process here rests en-
tirely on [TWW’s] argument about the inapplicability or
satisfaction of 112(f)”).
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Williamson, 792 F.3d at 1346. The Board’s factual findings
underlying this inquiry are reviewed for substantial evi-
dence. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341
(Fed. Cir. 2019).
TWW argues the Board erred in construing the term
“pressure controlling assembly” as invoking § 112(f). Our
law states that if a claim limitation uses the word “means,”
this creates a rebuttable presumption that § 112(f) applies.
Williamson, 792 F.3d at 1348. The converse is also true: if
a claim limitation does not use the word “means,” a rebut-
table presumption arises that the claim does not invoke
§ 112(f). Id. As the claimed “pressure control assembly”
does not use the word “means,” we begin our analysis with
the presumption that it does not invoke § 112(f).
With that starting point, we next turn to the “essential
inquiry” of “whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Id. When a
claim term lacks the word “means,” the presumption
against the application of § 112(f) will be overcome “if the
challenger demonstrates that the claim term fails to recite
sufficiently definite structure or else recites function with-
out reciting sufficient structure for performing that func-
tion.” Id. A “critical question” underlying this inquiry “is
whether the claim term is used in common parlance or by
[skilled artisans] to designate structure, including either a
particular structure or a class of structures.” MTD Prods.,
933 F.3d at 1341.
We begin by reviewing the Board’s analysis of the in-
trinsic record, starting with the claim, then the specifica-
tion and prosecution history. As to the claim term itself,
we find no error in the Board’s determination that the
claims do not recite sufficient, definite structure to perform
the functions of the “pressure controlling assembly.” Claim
1 requires the “pressure controlling assembly” to perform
several functions, e.g., monitoring the air pressure and
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activating the supplemental air pressure providing device,
but does not describe any structure for performing those
functions. See ‘979 patent at claim 1. As in Williamson,
the relevant portions of the claim—here, references to pres-
sure controlling assembly—are written “in a format con-
sistent with traditional means-plus-function claim
limitations” by replacing the term “means” with “assembly”
and then reciting four functions performed by the assem-
bly. See 792 F.3d at 1350. We have previously recognized
that the word “assembly” used with functional descriptors
is “similar to other generic, black-box words that this court
has held to be nonce terms similar to ‘means’ and subject
to § 112, ¶6.” MTD Prods., 933 F.3d at 1343. Like the claim
term “mechanical control assembly” in MTD Products, “the
claim language reciting what the [pressure] control[ing] as-
sembly is ‘configured to’ do is functional,” and thus the
claim format supports the applicability of § 112(f). Id. at
1343. See also Mass Inst. of Tech. v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006) (construing “colorant se-
lection mechanism” as a means-plus-function limitation);
Toro Co. v. Deere & Co., 355 F.3d 1313, 1325 (Fed. Cir.
2004) (same for “control mechanism”). And while “the mere
fact that the disputed limitations incorporate functional
language does not automatically convert the words into
means for performing such functions,” Zeroclick, LLC v.
Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018), the generic
term “assembly” preceded by the functional descriptor—
“pressure controlling”—supports a conclusion that the
term itself is purely functional. See Mas-Hamilton Grp. v.
LaGard, Inc., 156 F.3d 1206, 1213 (Fed. Cir. 1998) (noting
that “lever moving element” is “drafted as a function to be
performed rather than definite structure or materials” and
therefore was properly construed as a means-plus-function
element).
And we agree with the Board that nothing in the spec-
ification provides a structural definition for the “pressure
controlling assembly” or indicates the patentee acted as a
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lexicographer to define the term. See Board Decision at *13
(explaining that the specification’s “mere reference to items
121 and 122, without further description, does not convey
that the term ‘pressure controlling assembly’ itself con-
notes sufficient structure”). Additionally, the Board did not
err in relying on MTD Products to conclude that any struc-
ture arguably disclosed in the specification via an embodi-
ment cannot support a finding that the claim term itself
connotes a specific structure. Id.; see also MTD Prods., 933
F.3d at 1343 (“[A] preferred embodiment disclosed in the
specification cannot impart structure to a term that other-
wise has none.”).
The prosecution history of the ’979 patent also fails to
provide support for TWW’s argument that a skilled artisan
would understand “pressure controlling assembly” to con-
note a particular, definite structure or class of structures.
TWW argues that the examiner’s citation to pressure sen-
sors in various prior art references during prosecution as
disclosing the “pressure controlling assembly” limitation is
evidence that a skilled artisan would understand that term
to define structure. See Appellant’s Br. 27–31. We are un-
persuaded. TWW cites no authority to support this argu-
ment. See id. Nor does it explain why an examiner’s ability
to recognize that a pressure sensor in the prior art may
perform some of the stated functions of the “pressure con-
trolling assembly” is evidence that the term itself connotes
structure. 8
8 We also reject TWW’s argument that the exam-
iner’s silence during prosecution with respect to applicabil-
ity of § 112(f) to “pressure controlling assembly” is entitled
to weight in our analysis. See Appellant’s Reply Br. 5 n.2;
Oral Arg. at 5:37–7:25. In addition to forfeiting this argu-
ment by failing to raise it in its opening brief, see
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1319 (Fed. Cir. 2006), TWW fails to cite any authority that
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We next review the Board’s determination that the ex-
trinsic evidence failed to show that the term “pressure con-
trolling assembly” is used in common parlance by skilled
artisans in the relevant field. See Board Decision at *14.
We see no error in the Board’s analysis and find its factual
determinations supported by substantial evidence.
We agree with the Board that TWW’s expert’s testi-
mony that “pressure controlling assembly” “is descriptive”
to a skilled artisan is conclusory and unsupported by the
evidence of record. See id. We see no error in the Board’s
determination that the dictionary definition of “pressure
control” relied upon by Dr. Stevick—“Any device or system
able to maintain, raise, or lower pressure in a vessel or pro-
cessing system,” J.A. 2936—“provides no insight into
whether . . . ‘pressure controlling assembly’ is used in com-
mon parlance,” “is provided in functional terms,” and states
“‘[a]ny device or system’ which, together with the func-
tional language, suggests the ‘black-box nature’ of the
term.” Board Decision at *15.
We also agree with the Board that purported admis-
sions by Intex’s expert, Dr. Kuchel, do not militate against
the applicability of § 112(f). TWW argues that Dr. Kuchel’s
“admissions” (that (1) the “pressure controlling assembly”
“connote[s] that it controls pressure and it’s an assembly,”
(2) devices exist that sense or control pressure, and (3) a
prior art reference depicted “an apparatus that controls the
pressure”) weigh against invoking § 112(f) in the instant
case. See Appellant’s Br. 31–33; Board Decision at *15. At
best, Dr. Kuchel’s statements are evidence that a skilled
artisan would have known that devices existed that can
an examiner’s silence as to whether a given term invokes
§ 112(f) is entitled to weight in a subsequent judicial deter-
mination, regardless of whether the examiner recognized
that a different term in the patent—“noise silencing
means”—invoked § 112(f).
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perform the functions of the claimed “pressure controlling
assembly.” That is not the relevant inquiry, however, and
we see no reason to override the Board’s well-supported
factual determination that “the cited testimony from Dr.
Kuchel does not support an opinion that the term ‘pressure
controlling assembly’ is used in common parlance or by
[skilled artisans] to designate a particular structure or
class of structures.” Board Decision at *15.
The Board’s conclusions with respect to TWW’s smat-
tering of prior art references referring to “pressure control
assembl[ies]” are also supported by substantial evidence.
We see no error in the Board’s determination that:
Even if the use of the term “pressure controlling as-
sembly” or “pressure control assembly” reflected a
designation of structure, the extrinsic record
demonstrates, at best, that the term is used as a
descriptive term across a broad spectrum of indus-
tries, having a broad range of structures. The rec-
ord does not include sufficient evidence to
demonstrate that the term “pressure controlling
assembly” is used in common parlance or used to
designate a particular structure by a person having
ordinary skill in the art of the ’979 patent.
Board Decision at *17.
In light of the above, we find that the Board properly
construed “pressure controlling assembly” as a means-
plus-function claim limitation.
B
Having found § 112(f) applicable to the claimed “pres-
sure controlling assembly,” we now turn to its construction.
As we stated in Williamson:
Construing a means-plus-function claim term is a
two-step process. The court must first identify the
claimed function. Then, the court must determine
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what structure, if any, disclosed in the specification
corresponds to the claimed function. Where there
are multiple claimed functions, as we have here,
the patentee must disclose adequate corresponding
structure to perform all of the claimed functions. If
the patentee fails to disclose adequate correspond-
ing structure, the claim is indefinite.
792 F.3d at 1351–52 (internal citations omitted).
The four functions identified by the Board for the “pres-
sure controlling assembly,” see Board Decision at *20, are
undisputed on appeal. Accordingly, the only question is
whether the ’979 patent discloses sufficient structure to
perform each of them.
We agree with the Board that the patent fails to dis-
close structure for at least one function—“automatically ac-
tivat[ing] the supplemental air pressure providing device.”
See Board Decision at *23. TWW’s arguments rely exclu-
sively on Dr. Stevick’s conclusory testimony about how a
skilled artisan would interpret Figures 1 and 2a in the ’979
patent. Dr. Stevick contends that a skilled artisan would
recognize that elements 121 and 122 in Figure 2a interact
with element 13 shown in a different figure, Figure 1,
which he asserts is a “limit switch” that activates the sup-
plemental air pressure providing device. See J.A. 2864.
Yet nothing in the patent describes element 13 as a switch
or describes it being connected to element 121 and 122 or
the supplemental air pressure providing device. Nor does
Dr. Stevick ever provide a non-conclusory explanation as to
why a skilled artisan would understand element 13 to be a
limit switch or how it connects to elements 121 and 122 or
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18 TEAM WORLDWIDE CORPORATION v.
INTEX RECREATION CORP.
the supplemental air pressure providing device. See Board
Decision at *26. 9
We also agree with the Board that the CN ’302 appli-
cation’s disclosure cannot save these claims. TWW argues
that because the original Chinese-language version of the
CN ’302 application was submitted by the applicant during
prosecution, it is part of the prosecution history and, per B.
Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419,
1424 (Fed. Cir. 1997), may be relied upon to link or associ-
ate structure to the function recited in the claim. See Ap-
pellant’s Br. 43–44. TWW’s reliance on B. Braun is
misplaced. B. Braun’s reference to the “prosecution his-
tory” has been understood by our court to mean that affirm-
ative statements by the applicant during prosecution may
clearly link or associate corresponding structure with a re-
cited function—not that the content of any document or ref-
erence submitted during prosecution, without more, may
satisfy the patentee’s duty. See, e.g., Medtronic, Inc. v. Ad-
vanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1313–14
(Fed. Cir. 2001) (analyzing the applicant’s statements in a
preliminary amendment); Overhead Door Corp. v. Cham-
berlain Grp., Inc., 194 F.3d 1261, 1272 (Fed. Cir. 1999)
(finding the “patentees’ representation to the Patent and
Trademark Office in its . . . sworn declaration indicated
their intent to include the algorithm of Figure 3 as a ‘cor-
responding structure’ for the switch means”). TWW directs
us to no such statements, and we decline to hold that a Chi-
nese-language priority document, whose potentially rele-
vant disclosure was omitted from the United States patent
application family, provides a clear link or association be-
tween the claimed “pressure controlling assembly” and any
structure recited or disclosed in the ’979 patent.
9 We further note that the ’979 patent associates
only elements 121 and 122 in Figure 2 with the “pressure
controlling assembly”—not element 13.
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CONCLUSION
We have considered TWW’s remaining arguments and
find them unpersuasive. For the reasons set forth above,
we affirm the Board’s decision finding claims 1–5 of the
’979 patent unpatentable as indefinite under § 112(b). 10
AFFIRMED
10 As we affirm the unpatentability of the challenged
claims under § 112(b), we need not reach the Board’s alter-
native unpatentability finding based on § 112(a).