NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2007-1108

MAURICE MITCHELL INNOVATIONS, L.P., Plaintiff-Appellant,

v. INTEL CORPORATION, Defendant-Appellee.

Richard L. Schwartz , Whitaker, Chalk, Swindle & Sa wyer, L.L.P., of Fort Worth, Texas, argued for plaintiff-appellan t. Of counsel on the brief was Manny D. Pokotilow , Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., of Philadelphia, Pennsylvania. Robert A. Van Nest , Keker & Van Nest LLP, of S an Francisco, California, argued for defendant-appellee. With him on the brief were Christa M. Anderson and Steven A. Hirsch

. Appealed from: United States District C ourt for the Eastern District of Texas Judge Leonard DavisNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2007-1108 MAURICE MITCHELL INNOVATIONS, L.P., Plaintiff-Appellant,

v. INTEL CORPORATION, Defendant-Appellee.

__________________ _________

DECIDED: September 24, 2007

__________________ _________ Before RADER, MOORE, Circuit Judges , and YEAKEL, District Judge*

. RADER, Circuit Judge

. The United States District Court for the Eastern Distr ict of Texas granted Intel Corporation's ("Intel") motion for summary j udgment that claim 1 of U.S. Patent No. 4,875,154 ("the '154 patent") is invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2. Maurice Mitchell Innovations , L.P. v. Intel Corp. , No. 2:04-CV-450 (E.D. Tex. Dec. 11, 2006) (" Final Judgment "); Maurice Mitchell Innovations , L.P. v. Intel Corp. , No. 2:04-CV450 (E.D.Tex Nov. 22, 2006 (" Opinion "); Maurice Mitchell Innovations, L.P. v. Intel Corp. , No. 2:04-CV-450 (E.D. Tex. Jun. 21, 2006) (" Claim Construction Opinion "). Because the district court correctly constr ued the claim term "means for causing" as a

* Honorable Lee Yeakel, District Judge, Unit ed States District Court for the Western District of Texas, sitting by designation.means-plus-function limitati on under 35 U.S.C. § 112, ¶ 6 and correctly found the specification did not contain any correspond ing structure, this court affirms.
I The United States Patent and Trademark Office issued the '154 patent, entitled Microcomputer with Disconnected, Open, Independent, Bimemory Architecture, Allowing Large Interacting, Interconnected Multi-microcomputer Parallel Systems Accomodating [sic] Multiple Levels of Pr ogrammer Defined Heirarchy [sic], on October 17, 1989 from an application filed on June 12, 1987. The patent abstract states: A Bimemory Independent CPU (BICPU ) microcomputer which is comprised of a known CPU chip prov ided with additional circuitry to enable CPU to interact in a multi BICPU microcomputer system. Each BICPU microcomputer in a system is supplied with an assigned standard memory mechanically and logically connected to it's [sic] BICPU's "A" bus circuits. The BICPU microcomputer is also provided with connectors enabling the CPU to be connected to system buses. Any number of BICPU microcomputers c an be logically chained, linked and treed in a simple logical bimemory independent pattern infinitely in as many dimensions as is reasonably desired, us ing one standard set of dedicated, simple, single line conductors (system buses) to mechanically interconnect any "B" or "C" bus curc uits [sic] of two different BICPU microcomputers. '154 Patent Abstract. Generally, the pat ent describes a BICPU computer system "comprised of a known CPU chip with additional circuitry to enable the CPU to interact in a multi BICPU microcomputer system." '154 Patent col.7 ll.3-6. According to the specification, the inventi on allows "[a]ny num ber of BICPU microcomputers [to] be logically chained, linked and treed in a simp le logical bimemory independent pattern infinitely in as many dim ensions as is reasonably desired, using one standard set of dedicated, simple, single line conductors ( system buses) to mechanically interconnect

2007-1108 2any 'B' or 'C' bus circuits of two different BICPU microcomputers." '154 Patent col.7 ll.12-19. Claim 1 reads: A microcomputer data processing apparatus, comprising: [1] a Central Processing Unit (CPU), [2] a path configuring means , [3] path control circuits c onnecting said CPU to said path configuring means , [4] a plurality of contacts comprised of a plurality of distinct sets, [5] wherein said CPU further co mprises a dedicated memory address circuit, a dedicated memory dat a circuit, a dedicated memory control circuit and a dedicated power circuit, [6] wherein said path configuring means further comprises a dedicated memory address circuit, a dedicat ed memory data circuit and a dedicated memory control circuit, [7] wherein each dedicated memory address, data, and control circuit includes a plurality of dedicated memory addr ess, data, and control lines respectively, wherein [8] said memory control lines are co mprised of a read/write line, timing lines and status lines, [9] first switch means comprised of at least three distinct parts of connecting said dedicated memory address, data, and control circuits of said path configuring means to each of said first three sets of contacts, and [10] second switch means for connecting said dedicated memory address, data, and control lines of said path configuring means to said dedicated memory address, data, and control lines of said CPU respectively, [11] wherein said first and second switch means assume a non signalconducting state when said CPU power circuit is not supplied with power, [12] wherein said lines of said CPU an said contacts assume a non-signal conducting state when said first and second switch means are in said non-signal conducting state, [13] means for causing said first and second switch means to remain in said non signal-conducting state upon application of power to said CPU power circuit and to assume a signal-conductive state upon receipt of an appropriate signal from said CPU, and to [14] assume a non signal-conducting state upon receipt of an appropriate signal from said CPU. '154 Patent col.90 l.59 – col.91 l.37 (em phases and [limitation numbers] added).

2007-1108 3Maurice Mitchell Innovations, L.P. ("Mitc hell") brought suit against Intel in the United State District Court for the Eastern District of Texas alleging a number of Intel's products infringe Claim 1 of t he '154 patent. In construing the claims, the district court adopted the claim construction of District J udge Susan Illston of the United States District Court for the Norther n District of California. Claim Construction Opinion ; see , Maurice Mitchell v. Samsung Electronics Co., Ltd. , No. C 01-0295 SI (N.D. Cal. Jan. 29, 2002). Specifically, the district court cons trued "first switch m eans," "second switch means," and "means for causing" as means -plus-function limitations governed by 35 U.S.C. § 112, ¶ 6. Id. The district court then det ermined that the '154 patent specification did not disclose structure for the "switch means" limitations and the "means for causing" limitation. Opinion . As a result, the district court found Claim 1 of the '154 patent indefinite and therefore in valid as a matter of law. Id. II This court reviews a district court' s grant of summary judgment without deference, drawing all justifiable infe rences in favor of the nonmovant. Genentech, Inc. v. Amgen, Inc. , 289 F.3d 761, 767 (Fed. Cir. 2002). Cla im construction is a matter of law that this court revi ews without deference. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir . 1998) (en banc); Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d , 517 U.S. 370 (1996). "The review of indefiniteness under 35 U.S.C. § 112, paragr aph 2, proceeds as a question of law without deference." SmithKline Beecham Corp . v. Apotex Corp. , 403 F.3d 1331, 1338 (Fed. Cir. 2005).

2007-1108 4"A patent issued from the United States Patent and Trademark Office (PTO) bears the presumption of vali dity under 35 U.S.C. § 282. An accused infringer, therefore, must prov e 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 cl aims 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 specific ation shall conclude with one or more claims particularly pointing out and distinct ly claiming the subject matter which the applicant regards as his inve ntion." Claims "particularl y point[ ] out and distinctly claim[ ]" the invention when one of ordinar y skill in the art would understand the scope of the invention when the claims are read in conjunc tion 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 app licant "employs means-plus-function language in a claim, one must set forth in the specif ication an adequate disc losure 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. T herefore, "[i]f there is no st ructure in the specification corresponding to the means-plus-function limita tion 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).
III The district court found that "means for causing" was a means-plus-function limitation without any descripti ve corresponding structure withi n the specification. The

2007-1108 5only possible structure corresponding to the claimed function appears at Col.24 l.67 to Col.25 l. 56. Opinion , slip op. at 8. The district court then determined this passage did not contain any structure. As illustrated by the cl aim language in limitation 13, the "means for causing" controls the first and second switch means. In other words, the "means for causing" would need a structure (i.e., device or driv er) to control the function of the switch means. Mitchell contends that the '154 pat ent specification c ontains an adequate disclosure corresponding to t he "means for causing" limita tion to satisfy § 112 ¶ 2. Mitchell argues that the district court inco rrectly limited the corr esponding structure to the disclosure at Col.24 l.67 to Col.25 l.56 when the follo wing additional passages also disclose structure: Col.15, ll. 40-56; Col.19, line 34 to Col. 20, line 5; Co l.13, ll.11-19; Col.7, ll.37-44; Col.44, ll.21-46; Col.89, ll.14- 49; Col.90, ll.16-30; and Col.16, ll.48-53. Like the district court, however, this c ourt discerns little, if any, structure for "means for causing" in the specification and no disclosed link be tween that purported structure and the claimed function. This court also credits the district court's finding that Mitchell's counsel admitted during the summar y judgment hearing that the Col.24 l.67 to Col.25 l.56 passage does not in clude any structure linked to the claimed function. Maurice Mitchell Innovations v. Intel Corp. , 2:04cv450, slip op. at 35 (E.D. Tex. Sept. 28, 2006) (Transcript of Pretrial and Motion Hearing). Beyond that passage, however, this court finds no specific structure disclosed anywhere in the specification to carry out the "means for causing" function. Mitchell also offers another source of structure for the claimed means. The specification refers to the MCS6520 Peripheral Interface Adaptor ("PIA"). '154 Patent

2007-1108 6col.15 ll.40-55. The MCS6520 is a complex integrated circ uit (i.e., chip) containing numerous individual circuits which functions as an interface between a microprocessor and peripheral devices such as printers, disp lays and the like. Mitchell contends that the MCS6520 contains tri-state circuitry or tri-state drivers and that a person of ordinary skill in the art would understand the tri-state structure in t he MCS6520 to be capable of performing the "means for causing" function. While the MCS6520 may contai n tri-state or driver type circuits, the specification does not identify the tri- state circuits in the MCS6520 as the struct ure to carry out the "means for causing" limitation. The mere mention of a complicated integrated circuit, comprised of hundreds if not thousands of ci rcuits, is much too broad to sufficiently indicate the precise "means for causing" struct ure to a person of ordi nary skill in the art. See Med. Instrumentation & Diag nostic Corp. v. Elekta AB , 344 F.3d 1205, 1212 (Fed. Cir. 2003) ("It is important to determine whet her one of skill in the art would understand the specification itself to disclose the struct ure, not simply whether that person would be capable of implementing t hat structure."). In other words, as the district court noted, the MCS6520 is both too broad and not linked to the "means for causing" limitation. Opinion , slip op. at 8-9. Mitchell also attempts to identify struct ure in a variety of generalized passages in the specification. This court has examined these pass ages and finds no specific structure. Mitchell only stat es that "[t]hese passages are additional disclosures of the details of the structure, readily apparent to a person of ordinary skill in the art." In effect, Mitchell merely references various passages in the specification without providing any information to show structure corresponding to "means for causing." Mitchell appears to

2007-1108 7be arguing that a person of ordinary skill in the art would be able to ascertain the corresponding structure by combining a variet y of passages in the specification with their knowledge of the art. Ho wever, "in order for a claim to meet the particularity requirement of ¶ 2, the corresponding struct ure(s) of a means-plu s-function limitation must be disclosed in the writt en 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 structur e. The quid pro q uo for using a meansplus-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. This court sustains the finding that claim 1 is indefinite under U. S.C. § 112, ¶ 2. This court need not reach the "switch means" and "path configuring means" limitations because the district court's decision can be affi rmed solely on the "means for causing" limitation. IV Because the district court correctly cons trued the claim term "means for causing" as a means-plus-function limit ation under 35 U.S.C. § 112, ¶ 6 and correctly found the specification did not contain any corresponding structure for th is limitation, this court affirms.

AFFIRMED

2007-1108 82007-1108 9 COSTS Each party shall bear its own costs.