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SJ grant of noninfringement affirmed by CAFC

By Lawrence B. Ebert, Esq.

The CAFC in Welker Bearing v. PHD found that a claim term to a "mechanism" triggered "means plus function" treatment under 112 P 6-->

This court has had several prior occasions to consider the applicability of means-plus-function treatment in the context of
the claim term ?mechanism.? In Massachusetts Institute Of Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (?MIT?), this court considered the
applicability of means-plus-function treatment to the term ?colorant selection
mechanism.? This court noted that ?[t]he generic terms ?mechanism,? ?means,? ?element,?
and ?device,? typically do not connote sufficiently definite structure [to avoid means-plus-
function treatment] . . . The term ?mechanism? standing alone connotes no more
structure than the term ?means.?? Id. (emphasis added). Although ?[c]laim language that
further defines a generic term like ?mechanism? can sometimes add sufficient structure
to avoid 112 ¶ 6,? the adjectival modifier ?colorant selection? was not defined in the
specification and did not carry any generally understood structural meaning in the art.

Of infringement-->

Literal infringement of a claim limitation in means-plus-function format ?requires
that the relevant structure in the accused device perform the identical function recited in
the claim and be identical or equivalent to the corresponding structure in the
specification.? Applied Med. Research Corp. v. United States Surgical Corp., 448 F.3d
1324, 1333 (Fed. Cir. 2006).

Of equivalents, the CAFC got into a Chiuminatta issue-->

However, an important difference between the two
inquiries ?involves the timing of the separate analyses for an ?insubstantial change.?? Al-
Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Namely, an
equivalent structure under § 112 ¶ 6 ?must have been available at the time of the
issuance of the claim,? whereas the doctrine of equivalents can capture after-arising
?technology developed after the issuance of the patent.? Id.

The accused infringer won.

Full post as published by IPBiz on December 15, 2008 (boomark / email).