United States Court of Appeals
for the Federal Circuit
__________________________
ERGO LICENSING, LLC
AND UVO HOLSCHER,
Plaintiffs-Appellants,
v.
CAREFUSION 303, INC.,
Defendant-Appellee.
__________________________
2011-1229
__________________________
Appeal from the United States District Court for the
District of Maine in case no. 08-CV-0259, Judge George Z.
Singal.
___________________________
Decided: March 26, 2012
___________________________
JAMES G. GOGGIN, Verrill Dana, LLP, of Portland,
Maine, argued for plaintiffs-appellants.
STANLEY J. PANIKOWSKI, DLA Piper LLP (US), of San
Diego, California, argued for defendant-appellee. With
him on the brief was KATHRYN RILEY GRASSO.
__________________________
ERGO LICENSING v. CAREFUSION 303 2
Before NEWMAN, LINN, and MOORE, Circuit Judges.
Dissenting opinion filed by Circuit Judge NEWMAN.
MOORE, Circuit Judge.
Ergo Licensing, LLC and Dr. Uvo Hölscher (Ergo, col-
lectively) accused CareFusion 303, Inc. (CareFusion) of
infringing claims of U.S. Patent No. 5,507,412 (’412
patent) relating to an infusion system. In construing the
claims, the district court held that the terms “control
means” and “programmable control means” are indefinite.
Because the district court correctly held that no corre-
sponding structure is disclosed in the specification, we
affirm.
BACKGROUND
The ’412 patent describes an infusion system used to
meter and simultaneously deliver fluids from multiple
fluid sources into a patient’s body. Each fluid is individu-
ally metered so that different fluids may be discharged at
different rates. ’412 patent col.1 ll.6-11, col.2 ll.41-49. To
meter the fluids, adjusting means are associated with
each fluid source that influences the fluid flow for each
source. Id. col.1 ll.9-12. The adjusting means are coupled
to a central control device, which permits the selective
actuation and control of individual fluid flow sources via
the adjusting means. Id. col.1 ll.9-16, col.2 ll.41-49. The
control device has data fields that “describe at least the
metering of the individual fluid flows,” which can be
accessed by an operating surface. Id. The operating
surface consists of a screen and keypad for viewing and
setting the information in the control device, such as the
metering rate for each fluid flow source. Id. col.5 ll.23-52.
Ergo sued CareFusion for infringement of claims 1-12,
15-16, and 18-20. Prior to the Markman hearing, the
parties stipulated that several terms were means-plus-
3 ERGO LICENSING v. CAREFUSION 303
function terms, including the terms “programmable
control means” and “control means.” J.A. 213-15. The
programmable control means in claim 1, for example,
reads as follows:
programmable control means coupled with said
adjusting means for controlling said adjusting
means, said programmable control means having
data fields describing metering properties of indi-
vidual fluid flows;
The parties agreed that the analysis for both terms is the
same and that the function for the terms is “controlling
the adjusting means.” J.A. 1, 9. The district court held
that the “control means” terms are indefinite for failure to
disclose corresponding structure. Ergo Licensing LLP v.
CareFusion 303, Inc., 744 F. Supp. 2d 381, 388 (D. Me.
2010). Ergo appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
We review claim construction and indefiniteness de
novo. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d
1374, 1378 (Fed. Cir. 1999). Section 112, ¶ 2 requires
that a patent specification “conclude with one or more
claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his
invention.” 35 U.S.C. § 112 (2006). An applicant may
express an element of a claim “as a means or step for
performing a specified function . . . and such claim shall
be construed to cover the corresponding structure . . .
described in the specification and equivalents thereof.” 35
U.S.C. § 112 ¶ 6. In exchange for the ability to use a
generic means expression for a claim limitation, “the
applicant must indicate in the specification what struc-
ture constitutes the means.” Biomedino, LLC v. Waters
Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007). Such
ERGO LICENSING v. CAREFUSION 303 4
structure “must be clearly linked or associated with the
claimed function.” Med. Instrumentation & Diagnostics
Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003).
Failure to specify the corresponding structure in the
specification amounts to impermissible pure functional
claiming. Id. at 1211. “Although [§ 112 ¶ 6] statutorily
provides that one may use means-plus-function language
in a claim, one is still subject to the requirement that a
claim ‘particularly point out and distinctly claim’ the
invention.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (en banc). If an applicant does not disclose
structure for a means-plus-function term, the claim is
indefinite.
Ergo argues that the corresponding structure for “con-
trol means” is the recitation of “control device” throughout
the specification. Ergo contends that the general disclo-
sure of a “control device” is all that is necessary because a
control device is a generic structure known to those
skilled in the art. Such a control device, according to
Ergo, is synonymous with a general-purpose computer,
even though a computer is not recited in the specification.
Ergo argues that disclosure of an algorithm was not
required, because a general-purpose computer can per-
form the function. Ergo claims that the specification
describes additional structure of the control device, in
particular that it has processing capabilities, can generate
control commands, and has memory. Ergo also claims
that the specification’s teaching that the control device
has a “programming means” constitutes “the structure
with which control and monitoring functions can be
performed.” Appellant’s Reply Br. at 7-8 (emphasis
omitted).
None of these disclosures, however, are structure for
the function of “controlling the adjusting means.” The
recitation of “control device” provides no more structure
5 ERGO LICENSING v. CAREFUSION 303
than the term “control means” itself, rather it merely
replaces the word “means” with the generic term “device.”
The specification discloses that the control device has
memory, but memory is not structure capable of perform-
ing the function of “controlling the adjusting means.”
While in some circumstances generic structural disclo-
sures may be sufficient, that is not the case here. See,
e.g., Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d
1365, 1376-77 (Fed. Cir. 2010) (holding that “controller”
was sufficient disclosure because “[t]he record shows that
an ordinary artisan would have recognized the controller
as an electronic device with a known structure”). In this
case, Ergo’s expert testimony illustrates that those skilled
in the art would not recognize a “control device” as a
known structure. J.A. 73 at 99:2-19. Instead, Ergo’s
expert explained that there were at least three different
types of control devices commonly available and used at
the time to control adjusting means: microprocessors,
discrete circuits connected to stepper motors, and analog
circuits. Id. Although one of skill in the art may have
been able to find a structure that would work, that does
not satisfy § 112 ¶ 6. Under § 112 ¶ 6, a patentee is only
entitled to “corresponding structure . . . described in the
specification and equivalents thereof,” not any device
capable of performing the function. 35 U.S.C. § 112 ¶ 6
(emphasis added); see also Blackboard, Inc. v. De-
sire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009)
(“That ordinarily skilled artisans could carry out the
recited function in a variety of ways is precisely why
claims written in ‘means-plus-function’ form must disclose
the particular structure that is used to perform the re-
cited function.”). As Ergo’s expert testimony demon-
strates, the “control device” is not a specific structure.
As to Ergo’s claim that “control device” is synonymous
with computer, even if we were to accept that one skilled
ERGO LICENSING v. CAREFUSION 303 6
in the art would understand a control device to be a
general-purpose computer, the specification fails to dis-
close a corresponding algorithm required by our prece-
dent. In WMS Gaming Inc. v. International Game
Technology, we explained that computer-implemented
means-plus-function terms are limited to the algorithms
disclosed in the specification. 184 F.3d 1339, 1348 (Fed.
Cir. 1999). We later clarified that WMS Gaming “estab-
lished that the corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algo-
rithm disclosed in the specification.” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1249, 1254 (Fed. Cir. 2005).
Until recently, we have consistently required “that
the structure disclosed in the specification be more than
simply a general purpose computer or microprocessor.”
See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008). “Because general
purpose computers can be programmed to perform very
different tasks in very different ways, simply disclosing a
computer as the structure designated to perform a par-
ticular function does not limit the scope of the claim to
‘the corresponding structure, material, or acts’ that per-
form the function, as required by section 112 paragraph
6.” Id. Requiring disclosure of an algorithm properly
defines the scope of the claim and prevents pure func-
tional claiming.
In re Katz Interactive Call Processing Patent Litiga-
tion identified a narrow exception to the requirement that
an algorithm must be disclosed for a general-purpose
computer to satisfy the disclosure requirement: when the
function “can be achieved by any general purpose com-
puter without special programming.” 639 F.3d 1303, 1316
(Fed. Cir. 2011). In In re Katz, we held that “[a]bsent a
possible narrower construction” of the terms “processing,”
“receiving,” and “storing,” the disclosure of a general-
7 ERGO LICENSING v. CAREFUSION 303
purpose computer was sufficient. Id. We explained that
“[i]n substance, claiming ‘means for processing,’ ‘receiv-
ing,’ and ‘storing’ may simply claim a general purpose
computer, although in means-plus-function terms.” Id. at
1316 n.11. In other words, a general-purpose computer is
sufficient structure if the function of a term such as
“means for processing” requires no more than merely
“processing,” which any general-purpose computer may do
without any special programming. Id. at 1316-17. If
special programming is required for a general-purpose
computer to perform the corresponding claimed function,
then the default rule requiring disclosure of an algorithm
applies. It is only in the rare circumstances where any
general-purpose computer without any special program-
ming can perform the function that an algorithm need not
be disclosed.
The “control means” at issue in this case cannot be
performed by a general-purpose computer without any
special programming. The function of “controlling the
adjusting means” requires more than merely plugging in
a general-purpose computer. Rather, some special pro-
gramming would be required in order to control the
adjusting means. Ergo’s proposed construction exempli-
fies this: “any programmable computer or programmable
control device suitable for use in a multichannel infusion
system and equivalents thereof.” A computer would need
special programming to be “suitable for use in a mul-
tichannel infusion system.” A specially adapted computer
is not a general-purpose computer.
At oral argument, Ergo argued that Typhoon Touch
Technologies, Inc. v. Dell, Inc. supports its position be-
cause we held that algorithms may be disclosed “in prose.”
Oral argument at 5:10-9:10, Ergo Licensing, Inc. v. Care-
Fusion 303, Inc., No. 2011-1229, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
ERGO LICENSING v. CAREFUSION 303 8
11-1229.mp3 (citing 659 F.3d 1376 (Fed. Cir. 2011)). An
algorithm may be expressed “in any understandable
terms including as a mathematical formula, in prose, or
as a flow chart, or in any other manner that provides
sufficient structure.” Typhoon Touch, 659 F.3d at 1385
(quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008)). Even described “in prose,”
an algorithm is still “a step-by-step procedure for accom-
plishing a given result.” Id. at 1385 (quoting In re Free-
man, 573 F.2d 1237, 1245-46 (CCPA 1978)). In this case,
however, there is no algorithm described in any form for
the function of “controlling the adjusting means.” The
specification merely provides functional language and
does not contain any step-by-step process for controlling
the adjusting means. As a result, we hold that the dis-
trict court correctly determined that the “control means”
terms are indefinite for failure to disclose corresponding
structure.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
ERGO LICENSING, LLC
AND UVO HOLSCHER,
Plaintiffs-Appellants,
v.
CAREFUSION 303, INC.,
Defendant-Appellee.
__________________________
2011-1229
__________________________
Appeal from the United States District Court for the
District of Maine in Case No. 08-CV-0259, Judge George
Z. Singal.
__________________________
NEWMAN, Circuit Judge, dissenting.
The court again, irregularly and unpredictably, de-
parts from the established protocols of claim drafting.
The claims here at issue were written in the standard
straightforward manner of thousands of claims to systems
in which, in today’s electronic cyber-assisted technologies,
digital devices routinely perform some steps of a new
system. The claims here are of that genre: certain steps
are controlled by a device, in accordance with the known
methods for such steps, as set forth in the patent specifi-
cation.
ERGO LICENSING v. CAREFUSION 303 2
Ergo’s Patent No. 5,507,412 (the ’412 patent), filed on
June 14, 1994 and issued on April 16, 1996, describes a
multichannel metering system in which one of multiple
components called a “control means” controls various
described functions. Claims 1 and 18 are shown, with
boldface marking the control means aspect that my col-
leagues hold is inadequately described, and that they hold
thereby invalidates all of the claims:
1. Multichannel metering system for metering
preselected fluid flows, comprising:
a plurality of individual fluid flow sources;
a plurality of discharge lines, each line of said
discharge lines being connected to a corresponding
one of said fluid flow sources;
adjusting means associated with said fluid
flow sources for acting on said fluid flow sources to
influence fluid flow of said fluid flow sources;
programmable control means coupled
with said adjusting means for controlling
said adjusting means, said programmable
control means having data fields describing
metering properties of individual fluid
flows;
an operating surface connected to said control
means;
data input means for input of data into said
control means, said data input means being at
least partially connected to said operating surface;
data output means for output of data from
said control means, said data output means being
connected to said operating surface;
selector switch means forming a part of said
data input means, said selector switch means in-
cluding a plurality of selector switches, each selec-
tor switch being associated with a set of said fluid
3 ERGO LICENSING v. CAREFUSION 303
flow sources for representing segments of data
fields belonging to a corresponding set of fluid
flow sources on said operating surface, said each
selector switch functionally connecting said data
input means with said data fields belonging to
said associated set of fluid flow sources.
18. Multichannel metering system for metering
preselected fluid flows, comprising: a plurality of
individual fluid flow sources divided into a plural-
ity of sets; a plurality of discharge lines, each line
of said discharge lines being connected to a corre-
sponding one of said fluid flow sources;
adjusting means associated with said fluid
flow sources for acting on said fluid flow sources to
influence fluid flow of said fluid flow sources;
control means coupled with said adjust-
ing means for controlling said adjusting
means, said control means having data fields
describing said fluid flow sources and me-
tering parameters of said individual fluid
flows, said control means including a meter
management mode for editing and regulat-
ing said metering parameters;
a[n] operating surface connected to said con-
trol means;
data input means for input of data into said
control means, said data input means being at
least partially connected to said operating surface;
data output means for output of data from
said control means, said data output means being
connected to said operating surface;
a plurality of selector switch means, each of
said selector switch means being associated with
one of said plurality of sets of said fluid flow
sources, said each selector switch means placing
ERGO LICENSING v. CAREFUSION 303 4
said control means in said meter management
mode for said associated set of fluid flow sources.
CareFusion argued that the claims are invalid for lack of
described structure for “control means.” The patent
examiner did not deem the claims inadequate on this
ground. PTO expertise in such matters as patent exami-
nation for statutory compliance warrants deference, for
the PTO is “a qualified government agency presumed to
have properly done its job.” Am. Hoist & Derrick Co. v.
Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984).
The Administrative Procedure Act demands no less. And
the court wisely established in Exxon Research & Engi-
neering Co. v. United States, 265 F.3d 1371, 1380 (Fed.
Cir. 2001) that “close questions of indefiniteness in litiga-
tion involving issued patents are properly resolved in
favor of the patentee.”
The content of Ergo’s ’412 specification including the
claims is appropriate and routine. The invention is stated
to be the overall system, called a multichannel metering
system, as used in medical facilities to administer medi-
cines or nutrients to patients. From the description in the
court’s opinion, one would not suspect that the system is
described in ten columns of specification, plus four fig-
ures. The element that the court finds to be inadequately
described is the “control device” that performs the de-
scribed functions.
The specification contains descriptive text in detail
and completeness, describing the system in which the
control device stores data fields on metering schedules.
The specification starts in description of the overall
system with Figure 1, and the specification describes the
system, starting with reference to this figure:
The motor drives 12, the first operation surface 5,
the flow-measuring means 121, the selector
5 ERGO LICENSING v. CAREFUSION 303
switches 13, and the display units 14 are con-
nected to the control device 4 via control lines
15. The control device 4 has means for stor-
ing information, in which data fields on me-
tering schedules of a plurality of solutions to
be metered, which data fields are not repre-
sented in FIG. 1, are stored, as well as a pro-
gramming means, which is likewise not
shown, with which control and monitoring
functions can be performed. The data fields
associated with the individual solutions con-
tain, e.g., the exact designation of tile solu-
tion, the type of the syringe, and the
metering rate.
’412 patent, col.5 ll.40-52 (emphases added). Figure 1 is
as follows:
ERGO LICENSING v. CAREFUSION 303 6
The ’412 specification describes the function and opera-
tion of the control device, including that the control device
receives information about flow quantity, and generates
warning signals and control commands:
[T]he said flow-measuring means send a flow-
proportional measured quantity to the control de-
vice, and the said measured quantity is compared
with stored limit values there. If necessary, the
control device generates a warning signal, which
is displayed on the operating surface. If the me-
tering of the fluid flow is to be switched over to
manual operation, manual metering can be
blocked by the control device when the limit value
is exceeded or not met.
Id. at col.3 ll.48-56. At col.3 ll.25-28 the specification
further elaborates the operation of the control:
When the manual operating switch is actuated,
the control device generates a control command,
by which the predetermined adjusting means is
switched into the switched-off position.
The specification also states that “[a] multichannel meter-
ing system of this type” was known in the prior art, and at
col.1 ll.25-34 describes a prior-art system of European
patent 302,752:
A flow-adjusting means, with which each fluid
flow can be individually influenced, is located in
the line path of each discharge line. The flow ad-
justing means are connected to a central, pro-
grammable control device, which is located in the
lower part of the chassis, and which permits the
selective actuation of the individual flow-adjusting
means. The control device has a means for storing
information, in which data fields on discharge
7 ERGO LICENSING v. CAREFUSION 303
schedules of the individual types of fluids are
stored.
The specification also references another metering system
that appears in German patent document 33,29,977,
where in that prior art system:
[T]he metering rates of the individual fluid flows
are monitored by a central control device, but an
individual coding switch, with which the metering
rate can be set manually, is associated with each
fluid flow source. All coding switches are con-
nected to the control device, which calculates a to-
tal rate of delivery from the individual metering
rates delivered by the coding switches to the con-
trol device, and displays it via a display on the
control device.
’412 patent, col.1 ll.54-62.
The panel majority is not explicit as to the specific
area of inadequacy of structure on which it relies for its
rejection as fatally flawed under §112 ¶6. No error is
attributed to the patent examiner. The patent specifica-
tion is clear that the invention is the arrangement of the
components of the system, not any special or nonobvious
structure of a component. The specification is clear that
the inventor is not claiming the control device as its
invention. The patent describes the invention that is
presented for patenting:
The basic task of the present invention is to
improve a multichannel metering system such
that essential operating functions are integrated
on a central operating surface, on the one hand,
and, on the other hand, the data fields associated
with the individual fluid flow sources can be
ERGO LICENSING v. CAREFUSION 303 8
polled in a simple manner, and the risk of confu-
sion of the fluids to be metered is reduced.
Id. at col.2 ll.6-13. It is a truism that “patent documents
need not include subject matter that is known in the field
of the invention and is in the prior art, for patents are
written for persons experienced in the field of the inven-
tion.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed.
Cir. 2001).
The specification states that the invention is the ar-
rangement of components, not an improvement in a
control device: “The advantage of the present invention is
essentially the fact that direct access to the data field of a
fluid flow source or to the data fields of a predetermined
group of fluid flow sources is possible by means of the
selector switches.” ’412 patent, col.2 ll.25-28. The specifi-
cation describes prior-art structures that perform control
functions. See, e.g., Clearstream Wasterwater Sys., Inc. v.
Hydro-Action, Inc., 206 F.3d 1440, 1445-46 (Fed. Cir.
2000) (prior art disclosed in specification included in
structure for claimed means when means-plus-function
elements were “not the only points of novelty”). The court
departs from the routines of patent protocol, in now ruling
that the control device is not described in sufficient detail
to meet the requirements of §112 ¶6.
No party disputed that a person of ordinary skill in
the field of metering systems could routinely instruct the
control device how to perform the described control. The
PTO examination for compliance with §112 ¶6 did not
require whatever additional description my colleagues
believe to be lacking, and on which undefined lack my
colleagues invalidate all of the claims.
The presentation in the Ergo patent is a typical pres-
entation of a routine step that is performed by a known
component, in the form of descriptive text and stylized
9 ERGO LICENSING v. CAREFUSION 303
figures. This court’s foray into patent draftsmanship,
finding standard presentations now to be fatally deficient,
adds grievous unreliability to duly granted patents. The
invention patented by Ergo displays the established
protocol of specification content as characterizes many
thousands of computer-assisted procedures. The court
now rules that “more” was needed, although I cannot
discern what more, except for a five-foot shelf of zeros and
ones.
The correct focus is “whether one skilled in the art
would have understood that the specification of each
patent disclosed structure capable of performing the
function recited in the claim limitation.” Creo Prods., Inc.
v. Presstek, Inc., 305 F.3d 1337, 1347 (Fed. Cir. 2002).
This court, recognizing the ease with which patent claims
can later be criticized, stated in Exxon, 265 F.3d at 1375
that “[i]f the meaning of the claim is discernable, even
though the task may be formidable and the conclusion
may be one over which reasonable persons will disagree,
we have held the claim sufficiently clear to avoid invalid-
ity on indefiniteness grounds.” Nonetheless, my col-
leagues take up the opportunistic ploy of the accused
infringer, and hold, on summary judgment, that §112 ¶6
has been somehow violated, although we are not told
what is missing.
It was not disputed that skilled artisans would under-
stand the “control device” to be a microprocessor or cir-
cuitry to perform the steps in accordance with the criteria
described in the specification. Ergo’s disclosure conforms
to the established protocol. As the specification states,
the “present invention” is directed to the arrangement of
components, of which the “control device” is a “conven-
tional feature,” depicted in accordance with PTO practice
as set forth in PTO Rule 83:
ERGO LICENSING v. CAREFUSION 303 10
37 C.F.R. §1.83 Content of drawing.
(a) The drawing in a nonprovisional application
must show every feature of the invention specified
in the claims. However, conventional features dis-
closed in the description and claims, where their
detailed illustration is not essential for a proper
understanding of the invention, should be illus-
trated in the drawing in the form of a graphical
drawing symbol or a labeled representation (e.g., a
labeled rectangular box).
Although CareFusion sold its theory to my colleagues, it
is curious that the description in CareFusion’s own U.S.
Patent No. 5,171,301, entitled “Multiple mini-pump
infusion system” tracks that herein, for CareFusion
recites “programmable electronic means” in some claims
and depicts, as the structure that performs the function, a
microprocessor as a rectangular box. ’301 patent, col.4
ll.37-44; id. at Figure 2. Indeed, so do thousands, perhaps
hundreds of thousands, of issued patents. “[A] challenge
to a claim containing a means-plus-function limitation as
lacking structural support requires a finding, by clear and
convincing evidence, that the specification lacks disclo-
sure of structure sufficient to be understood by one skilled
in the art as being adequate to perform the recited func-
tion.” Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
1376-77 (Fed. Cir. 2001); see also Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003) (“VIA
needed to prove, by clear and convincing evidence, that
the specification lacks adequate disclosure of structure to
be understood by one skilled in the art as able to perform
the recited functions.”). Such a finding could not be made
on summary judgment, on the record in the district court.
Precedent also establishes that the specification dis-
close structure for performing the claimed means is “not a
11 ERGO LICENSING v. CAREFUSION 303
high bar,” Biomedino, LLC v. Waters Technologies Corpo-
ration, 490 F.3d 946, 950 (Fed. Cir. 2007), and “does not
raise the specter of an unending disclosure of what every-
one in the field knows.” Amtel Corp. v. Info. Storage
Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). There
was no semblance of clear and convincing evidence of
insufficient disclosure in terms of §112 ¶6.
The panel majority argues that a person of skill in the
field of the invention would not understand “control
device” as “a known structure.” Maj. Op. at 5. That
argument is contrary to the specification, for “knowledge
of one skilled in the art can be called upon to flesh out a
particular structural reference in the specification for the
purpose of satisfying the statutory requirement of defi-
niteness.” Creo, 305 F.3d at 1347. Indeed, if there were
some semblance of substance to this argument, again
summary judgment would be negated. Further, precedent
does not require a function to be implemented by a single
structure. See Linear Tech. Corp. v. Impala Linear Corp.,
379 F.3d 1311, 1322 (Fed. Cir. 2004) (“That the disputed
term is not limited to a single structure does not disqual-
ify it as a corresponding structure, as long as the class of
structures is identifiable by a person of ordinary skill in
the art.”). As the court stated in Telcordia Technologies,
Inc. v. Ciso Systems, Inc., 612 F.3d 1365, 1377 (Fed. Cir.
2010), “the specification need only disclose adequate
defining structure to render the bounds of the claim
understandable to an ordinary artisan.” See also Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed.
Cir. 2011) (“[T]he amount of detail that must be included
in the specification depends on the subject matter that is
described and its role in the invention as a whole, in view
of the existing knowledge in the field of the invention.”).
These standards are met.
ERGO LICENSING v. CAREFUSION 303 12
The panel majority also complains that no “algorithm”
is presented in the specification. My colleagues state that
the “narrow exception” of In re Katz Interactive Call
Processing Litigation, 639 F.3d 1303 (Fed. Cir. 2011) is
inapplicable here because the claimed function “requires
more than merely plugging in a general-purpose com-
puter.” Maj. Op. 6-7. My colleagues misread Katz. The
court ruled in Katz that the district court interpreted our
prior cases too broadly, and reaffirmed that the require-
ments of §112 ¶6 are met when claimed functions are
“coextensive with the structure disclosed.” 639 F.3d at
1316. See also, e.g., Telecordia, 612 F.3d at 1376-77
(“controller” provides structure for “monitoring means,”
for the record showed that “an ordinary artisan would
know how to interpret the specification and actually build
a circuit”); S3, 259 F.3d at 1370-71 (“selector” shown in
specification is structure for “means . . . for selectively
receiving,” for “[t]he uncontradicted evidence was that a
selector is of well known electronic structure and per-
forms a common electronic function, and is readily im-
plemented from the description in the specification”);
Intel, 319 F.3d at 1366-67 (“core logic” of a computer
modified to perform a program is structure for the
claimed functions, for “how to modify the core logic to
perform [the program] on the circuitry level may also be
properly left to the knowledge of those skilled in the art,
and need not be specified in the patent”); Linear Tech.,
379 F.3d at 1321-22 (“PWM circuit” is structure for “sec-
ond means for generating a first control signal during a
first state of circuit operation,” for the evidence showed
that “persons of skill in the art would understand that
‘PWM circuit’ references a discrete class of circuit struc-
tures that perform known functions”); Tech. Licensing
Corp. v. Videotek, Inc., 545 F.3d 1316, 1338-39 (Fed. Cir.
2008) (“video standard detector” is structure for “circuitry
to provide a format signal changeable in response to the
13 ERGO LICENSING v. CAREFUSION 303
format of said video type signal,” for expert testimony
showed that “technology to perform the claimed function
was available at the relevant time and would have been
known to a person skilled in the art.”).
The great weight of authority ratifies the presentation
in the ’412 specification. Neither CareFusion nor my
colleagues on this panel have shown by clear and convinc-
ing evidence that the ’412 claims are invalid for indefi-
niteness. The court’s new position simply taints
thousands of heretofore innocent patents, adding a fur-
ther infusion of unreliability to the patent grant. This is
of particular concern because the panel majority is not
relying on newly cited references or other possible exami-
nation oversights, but is invalidating a patent on purely
formalistic grounds—grounds on which the expertise of
patent examination is normally superior to that of judges.
This destruction of a granted patent based on a pre-
sumably flawed disclosure in the application, at a time
when it cannot be remedied, is not only a disservice to
inventors who expect a reliable patent upon examination
and grant, but an injury to the public that is served by
patent-supported innovation. I must, respectfully, dissent.