# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ROBERT BOSCH, LLC, a Delaware corporation , Plaintiff

- Appellant,

v.

SNAP

- ON INCORPORATED,

a Delaware corporation , AND DREW TECHNOLOGIES, I NCORPORATED, a Michigan corporation , Defendants

- Appellees.

______________________

2014

- 1040

______________________ Appeal from the United States District Court for the Eastern District of Michigan in No. 12

- CV

- 11503, Judge Robert H. Cleland.

______________________

Decided: October 14, 2014

______________________

J ONATHAN S. F RANKLIN , Fulbright & Jaworski LLP, of Washington, DC, argued for plaintiff

- appellant. With him on the brief were S HELIA K ADURA , of Austin, Texas, E RIK G. S WENSON , of Minneapolis, Minnesota, and G EORGE W. J ORDAN , III , of Houston, Texas.

G ARY M. R OPSKI , Brinks Gilson & L i one, of Chicago, Illinois, argued for defendants

- appellees. With him on theROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 2

brief w ere K ORI A NNE B AGROWSKI a nd J AMES G. D E R OUIN

. Of counsel on the brief were J AMES K. C LELAND , J ON H. B EAUPRÉ and J OHN A. L INGL , of Ann Arbor, Michigan.

______________________
Before P ROST , Chief Judge, T ARANTO and H UGHES , Circuit Judges.

P ROST , Chief Judge

. Plaintiff

- Appellant Robert Bosch, LLC (“Bosch”) a ppeals the decision from the United States District Court for the Eastern District of Michigan holding that all claims in U.S. Patent No. 6,782,313 (“’313 patent”) are invalid as indefinite. See Robert Bosch LLC v. Snap

- On, Inc. , No. 12

- 11503, 2013 WL 4042664 (E.D. Mich. Aug. 9, 2013). We agree with the district court that the terms “program recognition device” and “program loading d evice” invoke 35 U.S.C. § 112, ¶ 6 (2010) and that the specification does not disclose corres ponding structure for these terms. Therefore, we affirm the district court’s holding that all claims in the ’313 patent are invalid.

I. B ACKGROUND Bosch owns the rights to the ’313 patent, which claims a diagnostic tester that determines whether the com pu terized control unit in a motor vehicle needs to be repr ogrammed. ’313 patent col. 1 ll. 8

- 9, col. 1. l. 61

- col. 2. l. 1. The claimed external diagnostic tester is made up of a “program recognition device” and a “program loading device,” which are the only two claim terms at issue in this appeal. Both terms are recited in claim 1, the sole independent claim of the ’313 patent, which is reproduced below: 1. An external diagnostic tester for motor vehicles, the motor vehicles having programmable co ntrol units with self

- diagnostic means, wherein the control units can be connected to the e x-ROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 3

ternal diagnostic tester via a diagnostic/test plug in the motor vehicle, the external dia gnostic tester comprising,

a program recognition and program loading d evice , w herein a program version contained in a connected control unit is queried and reco gnized by means of the program recognition d evice , and, if the program available in the motor vehicle and recognized via the diagno stic/test plug is not stored there in a lat est and most current version, a respective most cu rrent version is loaded by the program loading device into a program storage device of the pertinent control unit of the motor vehicle, wherein the external diagnostic tester aut omatically establishes commu nication with a central dat[a] base in order to check the pr ogram version and, if necessary, to obtain the current program version that applies for the control unit connected to the diagnostic tester and to store it there.

Id. at col. 4 ll. 18

- 38 (emphase s added).
The specification contains no figures, but it states that the “program recognition device” connects to the motor vehicle via a diagnostic plug. ’313 patent abstract, col. 2 ll. 22

- 24. The “program recognition device” then queries and recognizes the program version contained in the control unit of the motor vehicle. Id. at col. 2 ll. 20

- 23. According to the specification, the “program loading device” also connects to the control unit through the diagnostic plug. ’313 patent col. 1 ll. 27

- 31. If necessary, the “ program loading device ” loads an updated version of a program into the control unit. Id. at col. 2 ll. 25

- 29. Bosch initially sued Defendant

- Appellee Snap

- On Inc. for infringement of the ’313 patent in the Central DistrictROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 4

of Californi a. Bosch later added infringement allegations against Defendant

- Appellee Drew Technologies, Inc., and the case was transferred to the Eastern District of Mich igan. After initial claim construction briefing, the Appe llees (hereinafter, “Snap

- On”) asserted that the two claim terms “program loading device” and “program recognition device” are means

- plus

- function terms under § 112, ¶ 6 and are indefinite. Regarding the first claim term, “pr ogram recognition device,” the district court adopted a presumption t hat the term invokes § 112, ¶ 6 based on the presence of the phrase “by means of” in cl aim 1. The district court then found that the presumption it had applied was not overcome and that the term was indefinite. Bosch , 2013 WL 4042664

, at *5

- 7. Regarding the second claim term, “program loading device,” the district court adopted the presu mption that it did not invoke § 112, ¶ 6 based on the lack of the word “means,” but the district court still concluded that “program loading device” was an indefinite mea ns

- plus

- function term. Id. at *8 -9

. The parties then stipulated to a final judgment of invali dity, and this appeal followed.

II. A PPLICABLE L AW Section 112, ¶ 6 (now § 112(f)) allows a patentee to express a claim limitation as “a means or step for pe rforming a specified function without the recital of stru cture, material, or acts in support thereof,” and the section provides that claim limitations expressed in this manner “shall be construed to cover the corresponding structure, material, or acts descr ibed in the specification and equiv alents thereof.”

The framework under which we determine if a claim limitation invokes § 112, ¶ 6 is a two

- step process. First, we must determine if the claim limitation is drafted in the

means

- plus

- function format. The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term. EnOcean GmbH v.ROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 5

Face Int’l Corp ., 742 F.3d 955, 958 (Fed. Cir. 2014) (cit ations omitted). Alternatively, where the claim language does not recite the term “means,” we presume that the limitation does not invoke § 112, ¶ 6. Id. When a claim term lacks the word “means,” the presumption can be overcome if the challenger demonstrates that “the claim term fails to ‘recite sufficiently defini te structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. (citation omitted).
If we conclude that a claim term invokes § 112, ¶ 6, we proceed to the second step and attempt to construe the disputed claim term by identifying the “corresponding structure, material, or acts described in the specification” to which the claim term will be limited. Welker Bearing Co. v. PHD, Inc ., 550 F.3d 1090, 1097 (Fed. Cir. 2008). If we are unable to identify any “co rresponding structure, material, or acts described in the specification,” the claim term is indefinite. Noah Sys., Inc. v. Intuit Inc. , 675 F.3d 1302, 1312 (Fed. Cir. 2012) (“[A] means

- plus

- function clause is indefinite if a person of ordinary skill in th e art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.”) (citations omitted).
Determining whether certain claim language invokes § 112, ¶ 6 “is an exercise in claim construction and is therefore a question of law, subject to de novo review.” Inventio AG v. ThyssenKrupp Elevator Ams. Corp

., 649 F.3d 1350, 1356 (Fed. Cir. 2011). Indefinite ness is a question of law that is also reviewed de novo. Atmel Corp. v. Info. Storage Devices, Inc ., 198 F.3d 1374, 1378 (Fed. Cir. 1999).

III. D ISCUSSION This appeal concerns Bosch’s challenges to the district court’s holding that two claim terms are means

- plus

function terms and are indefinite for failing to disclose corresponding structure. For the reasons discussedROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 6

herein, we conclude that the district court erred in appl ying the presumption that “program recognition device” is

a means

- plus

- function term. However, this error was harmless because we conclude that even without a pr esumption, the term “program recognition device” noneth eless invokes § 112, ¶ 6. We further agree with the district court that “program loading device” also invok es § 112, ¶ 6. And because the specification fails to identify corr esponding structures that are requi red where § 112, ¶ 6 applies , we conclude that the terms “program recognition device” and “program loading device” are indefinite.

A. No Presumption that “Program Recognition Device” Is a Means

- Plus

- Function Term
Claim 1 of the ’313 patent includes two re ferences to a “program recognition device”: “the external diagnostic tester comprising, a [1] program recognition and program loading device, wherein a program version contained in a connected control unit is queried and recognized by means of the [2] program recognition devic e

. . . .” ’313 patent col. 4 ll. 22

- 27 (emphasis added). The district court adopted a presumption that “program recognition device” is a means

- plus

- function term based on the phrase “by means of” in claim 1. Bosch , 2013 WL 4042664, at *5. The district court then held that the presumption it had applied was not overcome, reasoning that “the claim language is silent as to the structure for ‘program recogn ition device.’” Id. Therefore, the district court concluded that this term inv oked § 112, ¶ 6. Id. at *6.

O n appeal , Snap

- On does not defend the district court’s invocation of the “means” presumption, Appellee’s Br. 17 n.3, and Bosch challenges it. Bosch a rgues that th e presumption is not triggered by any and every use of the word “means” in a patent claim

. See York Prods., Inc. v. Cent . Tractor Farm & Family Ctr ., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“[M]ere incantation of the word ‘means’ in a clause reciting predominantly structure cannot evokeROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 7

section 112, ¶ 6.”). Here, Bosch notes that when first reciting a program recognition device, the claim does not use the term “means” at all, much less the classic phrase “means for.” And Bosch claims that the subsequent use of the term “by means of” later in the claim does not trigger the presumption in favor of § 112, ¶ 6.
On this initial issue we agree with Bosch. We are u naware of any precedent stating that the presumption is triggered by a claim’s use of the expression “by means of.” In the past w e have applied the presumption when a claim uses the word “means” as a noun in the claim: a “means” for doing something. We have not done so for the phrase “by means of. ”
Therefore, we conclude that the district court erred in adopting a presumption that “program recognition device” is a means

- plus

- function term based on the phrase “by means of” in claim 1. However, for the reasons discussed in the Part III.B, infra

, that error was harmless, as even without the benefit of the presumption, “program recogn ition device” still invokes § 112, ¶ 6.
B. The Presumption Against Invoking § 112, ¶ 6 Is Ove rcome for Both Terms Although both “program recognition device” and “pr ogram loading devic e” are presumed not to invoke § 112, ¶ 6, we must next tu rn to the issue of whether this “strong ” presumption against means

- plus

- function clai ming is overcome. See Lighting World, Inc. v. Birchwood Lighting, Inc. , 382 F.3d 1354, 1358 (Fed. Cir. 2004). In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6. Inventio , 649 F.3d at 1357. The question is whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions. See Laitram Corp. v. Rexnord, Inc. , 939 F.2d 1533, 1536 (Fed. Cir. 1991) (“[t]he recited structure tells only whatROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 8

the means

- for

- joining does, not what it is structurally”). In the latter case, § 112, ¶ 6 then commands a constru ction of the limitation as referring to specification

identified corresponding structures and their equivalents.
Snap

- On argue s that the claim terms “program reco gnition device” and “program loading device” each lack sufficiently definite structure

. Indeed, this court has found the word “device” to be a non

- structural, “nonce” word. See Mass

. Inst. of Tech. v. Abacus S oftware , 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media C

ommc’ns, LLC v. Int’l Trade Comm’ n , 161 F.3d 696, 705 (Fed. Cir. 1998) . And the other words do nothing more than identify functions for the “device” to perform.
Bosch does not dispute the generic meaning of “d evice,” but it argues that the term s “program recognition device” and “program loading device” both name physical electronic structures with physical connections to other components discussed in the ’313 patent. According to Bosch, the specification explains how the “program reco gnition device” connects through the diagnostic plug to the control unit of the motor vehicle and receives and proces ses signals from the control unit when it determines the program version. ’313 patent col 2 ll . 20

- 22 (“the program version contained in the connected control unit is queried and recognized using the program recognition device ”); col. 3 ll. 19

- 23 (“the external diagnostic tester automat ically checks, using the program recognition device simu ltaneously and preferably automatically, which program version and which data record is available in the control unit connected at that moment”) (emphases added). And Bosch claims that the specification explains how the “program recognition device” connect s to the diagnostic plug in the motor vehicle to interface with the control unit. ’31 3 patent abstract (“the program available in the motor vehicle [is] recognized via the diagnostic/test plug”).ROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 9

However, as Snap

- On note s , the ’313 patent’s specification does not contain a single reference to the structure of the “program recognition device” itself; all of the pro ffered citations from the specification merely explain its function. For example, the statement that the external diagnostic tester is “equipped” with the “program recogn ition device” that “querie[s] and recognize[s]” program versions in the control unit is nothing more than a fun ctional description. ’313 patent col. 2 ll. 18

- 22. This pa ssage is devoid of structure. Likewise, the passage that explains how the external diagnostic tester uses the

“ program recognition device ” to automatically check which program version is currently on the control unit only describes the connection of the external diagnostic tester to the control unit in the vehic le. See id. at col. 3 ll. 19

- 23. The specification is, therefore, also silent about any interaction between the “program recognition device” and other components of the system, including the exte rnal diagnostic tester. Contrary to what Bosch contends,
t he specification does not teach how the “program recogn ition device” receives and processes signals, as the words “signal” and “process” are not even in the specification.
Similarly, Bosch argues that the specification e x plains that the “program loading d evice” loads, if nece s sary, an updated version of a program into the program storage device component of the control unit. Id. at col. 3 ll. 25

- 29. And Bosch notes that the specification states the “program loading device” interfaces with the control uni t of a motor vehicle via the diagnostic plug in the motor vehicle. See id. at col. 1 ll. 29

- 31 (prior art discus s ing how “control unit programs can be loaded into the unpr ogrammed control unit via the interface of the dia g no stic/test plug”). In addition, Bosch notes that this occurs via “the serial communication protocol,” id. at col. 3 ll. 32

- 35, which Bosch uses as support for its argument that signals are passed and processed. Thus, Bosch claims that the ’313 patent teaches how the “program loadingROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 10

de vice” connects to, interacts with, and sends signals to physical components of a motor vehicle through physical connections.
Much like the descriptions of the “program recogn ition device,” the passages in the specification on which Bosch relies to discuss the “program loading device” provide no structural guidance. Indeed, as Snap

- On
note s , the ’313 patent is silent on what such a “ program loading device ” consists of; the loading could be achieved by using any type of device that comprises hardware, softwa re, or both. And the specification is again silent about how the “program loading device” receives and processes signals; the lone mention of a serial communic ation protocol is actually in reference to the “diagnostic/test plug.” See ’313 patent col. 3 ll. 32

- 35 (“The control units used today are equipped with a flash storage device that can be programmed via the serial communication protocol via the diagnostic/test plug.”). Because the ’313 patent’s disclosures of “program recognition device” and “program loading device” are solely functional, one of ordinary skill in the art could not find in the specification a definition of the terms as referring to a particular structure.
In trying to avoid invoking § 112, ¶ 6, Bosch also heavily relies on Inventio , a case where we held that the
term “ modernizing device” fell outside § 112, ¶ 6 based on the extensive structural description in the intrinsic re cord. Inventio , 649 F.3d at 1357

- 59. In Inventio

, however, the specification and drawings of the patent

- in

- suit not only described in detail how the “modernizing device” was “connected to an elevator control and a computing unit” but also showed the internal components o f the “moder nizing device,” including a processor, a signal generator, a

c onverter, memory, and signal receiver elements. Id. at 135 4, 135 8. Dependent claims further referred to “input, output, and signal receiver aspects” of the “modernizing device.” Id. at 1358. Here, unlike in Inventio

, the claims involve ordinary functional terms, and there is no la n-ROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 11

guage in the ’313 patent’s dependent claims or specific ation that defines the terms to refer to structures

. Finally, Bosch argues that the district court impro pe rly disregarded the declaration of its expert witness, Dr. Wagn er, who is also a named inventor. At a minimum, Bosch alleges that this declaration created a disputed issue of material fact. Dr. Wagner asserted that the two claim terms were generally understood to have structural meanings in the art at the time of th e invention. He stated that a “program recognition device” is “an electro nic detection unit configured to identify or acknowledge the existence, status or validity of a program,” and by defin ition, “it connotes structure.” J.A. 3087 ¶ ¶ 21, 27. Dr. Wagner also posited that a “program loading device” is “an electronic device configured to copy or move a co mputer program into a memory area from which the pr ogram is executed,” and he stated that this meaning connotes a physical electronic structure. J. A. 3085 ¶ 12. However, Dr. Wagner’s statements are both conclusory and unhelpful to Bosch. L abeling the devices as “electro nic” and repeating their function does not identify stru cture. Dr. Wagner also stated that one of ordinary skill in the art would be able to employ the functions of the “program recognition device” and the “program loading device” by using one of many possible devices. See J.A. 3087 ¶ 24 (“I have had hands

- on experience with the following types of program recognition devices: transl ators, converters, receivers, bus monitors, calibration applications and development environments.”); J.A. 3085 ¶ 15 (“I have had hands

- on experience with an installer, which is one type of program loading device.”). However, merely listing examples of po ssible structures is insufficient to avoid invocation of § 112, ¶ 6. Indeed, means

plus

- function language that defines a category in fun ctional terms will typically cover examples of structuresROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 12

that fall within it. This is not a basis for distinguishing structural language from § 112, ¶ 6 language.
Although Bosch was entitled to a presumption against

means

- plus

- function claiming, for the foregoing reasons we agree with the district court and Snap

- On that this presumption was overcome. The claim terms

, construed in light of the specification, fail to provide sufficiently definite struc ture to one of skill in the art

. The claim terms “program recognition device” and “program loading de vice” invoke § 112, ¶ 6.

C. The Two Claim Terms Are Indefinite

Since we have concluded that both claim terms invoke § 112, ¶ 6, we now must attempt to construe the terms by identifying the “corresponding structure

. . . described in the specification” to which the claim term will be limited. Welker Bearing Co. , 550 F.3d at 1097. “I f there is no structure in the specification corresponding to the means

plus

- function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp ., 490 F.3d 946, 950 (Fed. Cir. 2007). On this

p oint, however, little needs to be said. Bosch did not argue to this court that, even if the claim language at issue is within § 112, ¶ 6, the language is definite because the specification sufficiently discloses corresponding
structure. See Ap pellant’s Br. 51

- 52. And we also see no such disclosure.
Indeed, as already discussed in Part III.B, in the li mited number of instances that the specification even mentions these claim terms, it offers no further guidance about their structures. Therefor e, we conclude that “program recognition device” and “program loading d evice” are indefinite. Since these terms are found in the only independent claim of the ’313 patent, we conclude that all claims in the ’313 p atent are invalid.ROBERT BOSCH , LLC v. SNAP

- ON INCORPORATED 13

I V. C ONCLUSION
Since w e agree with the district court that both “pr ogram recognition device” and “program loading device”

are means

- plus

- function terms and that the specification does not disclose the requisite corresponding structures, we affirm the district court’s holding th at all claims in the ’313 patent are invalid as indefinite.

AFFIRMED