NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

DIONEX SOFTRON GMBH,

Appellant

v.

AGILENT TECHNOLOGIES, INC.,

Appellee

______________________

2019-1888

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 106,073.

______________________

Decided: May 6, 2020

______________________

ANDREW JAMES ISBESTER, Kilpatrick Townsend & 

Stockton LLP, San Francisco, CA, for appellant. Also represented by JORDAN TRENT JONES, Menlo Park, CA. 

 JOHN B. SGANGA, JR., Knobbe, Martens, Olson & Bear, 

LLP, Irvine, CA, for appellee. Also represented by EDWARD 

M. CANNON, DAVID GERARD JANKOWSKI, PHILIP MARK 

NELSON. 

 ______________________

Before LOURIE, WALLACH, and HUGHES, Circuit Judges.

Case: 19-1888 Document: 43 Page: 1 Filed: 05/06/2020
2 DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC.

LOURIE, Circuit Judge.

Dionex Softron GmbH (“Dionex”) appeals from a decision of the Patent Trial and Appeal Board (“Board”) determining that claims 21–39 of U.S. Patent Application

14/454,577 (the “’577 application”) are unpatentable for 

lack of written description and indefiniteness under 35 

U.S.C. § 112 and that Dionex therefore lacks standing to 

continue an interference between the ’577 application and

U.S. Patent 9,435,773 (the “’773 patent”). See Agilent 

Techs., Inc. v. Dionex Softron GmbH, Interference No. 

106,073, 2019 WL 1453983 (PTAB March 29, 2019) (“Decision”). Because we conclude that the Board did not err in 

its construction of the claims under 35 U.S.C. § 112(f) and 

agree that the ’577 application lacks sufficient disclosure

under the Board’s construction, we affirm.

BACKGROUND

Agilent Technologies, Inc. (“Agilent”) owns the ’773 patent, which is directed to a sample injector for use in high 

performance liquid chromatography. ’773 patent, Abstract. The sample injector includes a metering device for 

introducing a fluidic sample into a sample loop, a switchable valve capable of switching positions to selectively connect or disconnect various conduits connected to the valve, 

and a control unit for controlling switching of the valve to 

transfer the sample loop between a low-pressure state and 

a high-pressure state via an intermediate state to equilibrate a pressure difference in the sample loop between the 

low-pressure and the high-pressure state. Id. col. 3 ll. 17–

38.

In 2014, Dionex filed the ’577 application, which is also 

directed to sample injectors for use in high performance liquid chromatography. Dionex copied claims 1–19 of the ’773 

patent into its ’577 application as claims 21–39 to provoke 

an interference. The copied claims include two independent claims. Claim 21, an apparatus claim, recites in part 

“a control unit configured for controlling the valve switch 

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DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC. 3

among a first position, a second position and an intermediate position in order transfer the sample loop between a 

low pressure corresponding to the first position of the valve 

and a high pressure corresponding to the second position of 

the valve.” Claim 39 recites similar subject matter as a 

method claim, including “controlling the valve to switch 

among predetermined valve positions to transfer the sample loop between a low pressure and a high pressure.”

The Board declared an interference and Agilent filed a 

motion for judgment that the claims are indefinite and lack 

written description support in the ’577 application. Specifically, Agilent argued that the “control unit” limitation of 

claim 21 and the “controlling” limitation of claim 39 should 

be construed as functional limitations under 35 U.S.C. 

§ 112(f) and that, when so construed, the ’577 application 

fails to disclose adequate structure, rendering the claims 

indefinite.

The Board agreed with Agilent and entered judgment 

against Dionex. First, the Board determined that the “control unit” limitation of claim 21 and the “controlling” limitation of claim 39 are functional limitations subject to 

§ 112(f). Decision, 2019 WL 1453983, at *9. Based on the 

testimony of Agilent’s expert, Dr. Schug, the Board determined that the limitations would not convey any corresponding structure or acts to a person of ordinary skill, and 

therefore recite only functions. Id. at *7. Observing that 

“when a party challenges written description support for 

an interference count or the copied claim in an interference, the originating disclosure provides the meaning of 

the pertinent claim language,” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), the 

Board proceeded to identify corresponding structure for the 

claim terms in light of the written description of Agilent’s 

’773 patent. Having determined that both the “control 

unit” and “controlling” limitations are subject to § 112(f), 

the Board construed the terms together and determined

that the limitations require physical movement of the valve 

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4 DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC.

and that the written description of the ’773 patent discloses 

the corresponding structure for that function as a gearbox, 

motor controller, encoder, and central processing unit. Decision at *9; ’773 patent col. 8 ll. 61–67. Finally, the Board 

determined that Dionex’s ’577 application lacks disclosure 

of the corresponding structure disclosed in the ’773 patent. 

Id. at 12. Accordingly, the Board held that the copied 

claims are indefinite as to the ’577 application and entered 

judgment against Dionex. Id. at 13.

Dionex appealed. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

“Claim construction is a question of law that may involve underlying factual questions.” Amgen Inc. v. Amneal 

Pharm. LLC, 945 F.3d 1368, 1375 (Fed. Cir. 2020) (citing 

Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332 

(2015)). “Whether claim language invokes [§ 112(f)] is a 

legal question of claim construction that we review de 

novo.” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. 

Cir. 2019) (citing Williamson v Citrix Online LLC, 792 F.3d 

1339, 1346 (Fed. Cir. 2015)). “We review the Board’s factual findings underlying this inquiry for substantial evidence.” Id. (citing EnOcean GmbH v. Face Intern. Corp., 

742 F.3d 955, 959 (Fed. Cir. 2014)).

“Indefiniteness is a question of law that we review de 

novo, subject to a determination of underlying facts, which 

we review for substantial evidence.” Guangdong Alison HiTech Co v. ITC, 936 F.3d 1353, 1359 (Fed. Cir. 2019) (citing 

One-E-Way, Inc. v. ITC, 859 F.3d 1059, 1062 (Fed. Cir. 

2017)). “When no structure in the specification is linked to 

the function in a means-plus-function claim element, that 

claim is indefinite.” Bosch Auto. Serv. Sols., LLC v. Matal, 

878 F.3d 1027, (Fed. Cir. 2017) (citing AllVoice Computing 

PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. 

Cir. 2007)).

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On appeal, Dionex does not dispute that the “control 

unit” limitation of claim 21 recites functional language. 

Rather, it argues that the corresponding structure is a general-purpose computing device and does not require a gearbox, motor controller, and encoder as determined by the 

Board. Under such a construction, Dionex argues, the ’577 

application discloses sufficient structure. As for claim 39, 

Dionex argues that the “controlling” term is not a functional limitation because the claim recites sufficiently specific acts for performing the function of controlling the 

valve.

Agilent responds that the Board properly construed the 

disputed claim terms as functional limitations that require 

movement of the valve and that the ’577 application does 

not disclose any structure for effecting that function.

We agree with Agilent. As recognized by the Board, the

disputed claim terms require switching the valve between 

different positions, which necessarily requires movement 

of the valve. Accordingly, the Board identified the corresponding structure in the ’773 application as that which effects the movement of the valve—namely the gearbox, 

motor controller, encoder, and central processing unit. 

Based on its construction, the Board determined that the 

’577 application fails to disclose such a corresponding 

structure. In reaching its conclusion, the Board relied on 

the testimony of Dr. Schug that the ’577 application does 

not contain any disclosure of structures, materials, or acts 

capable of controlling the valve to switch among the different positions as well as the disclosure of the ’577 application itself that the controllable drive of the valve is “not 

shown.” We discern no error in the Board’s analysis and 

therefore agree that the involved apparatus claims are indefinite as to the ’577 application.

As for claim 39, we agree with Agilent and the Board 

that the “controlling” limitation is a functional claim term 

subject to the same construction as claim 21. Based on Dr. 

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6 DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC.

Schug’s testimony that the claim term would not connote 

acts to a person of skill sufficient to perform the recited 

function, the Board determined that claim 39 does not recite acts sufficient to perform the recited function, and we 

agree. Accordingly, for similar reasons as discussed above 

with respect to claim 21, we agree that the ’577 application 

fails to disclose sufficient structure for performing the recited function, rendering claim 39 indefinite.

CONCLUSION

Because the claims are indefinite and hence unpatentable, Dionex lacks standing to continue the interference. 

We have considered Dionex’s remaining arguments but 

find them unpersuasive. For the foregoing reasons, the decision of the Board is affirmed.

AFFIRMED

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