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, INCORPORATED, 

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

______________________ 

JONATHAN S. FRANKLIN, Fulbright & Jaworski LLP, of 

Washington, DC, argued for plaintiff-appellant. With him 

on the brief were SHELIA KADURA, of Austin, Texas, ERIK 

G. SWENSON, of Minneapolis, Minnesota, and GEORGE W.

JORDAN, III, of Houston, Texas. 

GARY M. ROPSKI, Brinks Gilson & Lione, of Chicago, 

Illinois, argued for defendants-appellees. With him on the 
2 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

brief were KORI ANNE BAGROWSKI and JAMES G. DEROUIN. 

Of counsel on the brief were JAMES K. CLELAND, JON H.

BEAUPRÉ and JOHN A. LINGL, of Ann Arbor, Michigan. 

______________________ 

Before PROST, Chief Judge, TARANTO and HUGHES, Circuit 

Judges.

PROST, Chief Judge. 

Plaintiff-Appellant Robert Bosch, LLC (“Bosch”) appeals 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 device” invoke 35 U.S.C. § 112, ¶ 6 (2010) and that the 

specification does not disclose corresponding structure for 

these terms. Therefore, we affirm the district court’s 

holding that all claims in the ’313 patent are invalid. 

I. BACKGROUND

Bosch owns the rights to the ’313 patent, which claims 

a diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed. ’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 control units with self-diagnostic means, wherein 

the control units can be connected to the ex-
ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED 3

ternal diagnostic tester via a diagnostic/test 

plug in the motor vehicle, the external diagnostic tester comprising, 

a program recognition and program loading device, wherein a program version contained in a 

connected control unit is queried and recognized by means of the program recognition device, and, if the program available in the 

motor vehicle and recognized via the diagnostic/test plug is not stored there in a latest and 

most current version, a respective most current 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 automatically establishes communication with a 

central dat[a] base in order to check the program 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 (emphases 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 District 
4 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

of California. Bosch later added infringement allegations 

against Defendant-Appellee Drew Technologies, Inc., and 

the case was transferred to the Eastern District of Michigan. After initial claim construction briefing, the Appellees (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, “program recognition device,” the district court adopted a 

presumption that the term invokes § 112, ¶ 6 based on the 

presence of the phrase “by means of” in claim 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 presumption 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 means-plus-function term. Id. at *8-9. 

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

II. APPLICABLE LAW

Section 112, ¶ 6 (now § 112(f)) allows a patentee to 

express a claim limitation as “a means or step for performing a specified function without the recital of structure, 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 described in the specification and equivalents 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) (citations 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 definite 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 “corresponding 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 the 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). Indefiniteness 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. DISCUSSION

This appeal concerns Bosch’s challenges to the district 

court’s holding that two claim terms are means-plusfunction terms and are indefinite for failing to disclose 

corresponding structure. For the reasons discussed 
6 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

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

a means-plus-function term. However, this error was 

harmless because we conclude that even without a presumption, the term “program recognition device” nonetheless invokes § 112, ¶ 6. We further agree with the district 

court that “program loading device” also invokes § 112, 

¶ 6. And because the specification fails to identify corresponding structures that are required 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 references 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 device . . . .” ’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 recognition device.’” Id. Therefore, the district court concluded 

that this term invoked § 112, ¶ 6. Id. at *6.

On 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 argues that the 

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 evoke 
ROBERT 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 unaware of any precedent stating that the presumption is 

triggered by a claim’s use of the expression “by means of.” 

In the past we 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 recognition device” still invokes § 112, ¶ 6.

B. The Presumption Against Invoking § 112, ¶ 6 Is Overcome for Both Terms

Although both “program recognition device” and “program loading device” are presumed not to invoke § 112, 

¶ 6, we must next turn to the issue of whether this 

“strong” presumption against means-plus-function claiming 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 what 
8 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

the means-for-joining does, not what it is structurally”). 

In the latter case, § 112, ¶ 6 then commands a construction of the limitation as referring to specificationidentified corresponding structures and their equivalents.

Snap-On argues that the claim terms “program recognition 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 Software, 462 

F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media

Commc’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 “device,” but it argues that the terms “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 recognition device” connects through the diagnostic plug to the 

control unit of the motor vehicle and receives and processes 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 automatically checks, using the program recognition device simultaneously 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” connects to the diagnostic 

plug in the motor vehicle to interface with the control 

unit. ’313 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 notes, the ’313 patent’s specification does not contain a single reference to the structure 

of the “program recognition device” itself; all of the proffered citations from the specification merely explain its 

function. For example, the statement that the external 

diagnostic tester is “equipped” with the “program recognition device” that “querie[s] and recognize[s]” program 

versions in the control unit is nothing more than a functional description. ’313 patent col. 2 ll. 18-22. This passage 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 vehicle. 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 external diagnostic tester. Contrary to what Bosch contends, 

the specification does not teach how the “program recognition device” receives and processes signals, as the words 

“signal” and “process” are not even in the specification. 

Similarly, Bosch argues that the specification explains 

that the “program loading device” loads, if necessary, 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 unit 

of a motor vehicle via the diagnostic plug in the motor 

vehicle. See id. at col. 1 ll. 29-31 (prior art discussing how 

“control unit programs can be loaded into the unprogrammed control unit via the interface of the diagnostic/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 loading 
10 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

device” connects to, interacts with, and sends signals to 

physical components of a motor vehicle through physical 

connections.

Much like the descriptions of the “program recognition device,” the passages in the specification on which 

Bosch relies to discuss the “program loading device” 

provide no structural guidance. Indeed, as Snap-On

notes, 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, 

software, or both. And the specification is again silent 

about how the “program loading device” receives and 

processes signals; the lone mention of a serial communication 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 record. 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 of the “modernizing device,” including a processor, a signal generator, a 

converter, memory, and signal receiver elements. Id. at 

1354, 1358. 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 lan-
ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED 11

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

Finally, Bosch argues that the district court improperly disregarded the declaration of its expert witness, Dr. 

Wagner, 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 the invention. He 

stated that a “program recognition device” is “an electronic detection unit configured to identify or acknowledge the 

existence, status or validity of a program,” and by definition, “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 computer program into a memory area from which the program 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. Labeling the devices as “electronic” and repeating their function does not identify structure. 

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: translators, 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 possible structures is insufficient to avoid invocation of § 112, ¶ 6. Indeed, meansplus-function language that defines a category in functional terms will typically cover examples of structures 
12 ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED

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 structure to one of skill in the art. The claim 

terms “program recognition device” and “program loading 

device” 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. “If there is no 

structure in the specification corresponding to the meansplus-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 

point, 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 Appellant’s Br. 51-52. And we also see no 

such disclosure.

Indeed, as already discussed in Part III.B, in the limited number of instances that the specification even 

mentions these claim terms, it offers no further guidance 

about their structures. Therefore, we conclude that 

“program recognition device” and “program loading device” are indefinite. Since these terms are found in the 

only independent claim of the ’313 patent, we conclude 

that all claims in the ’313 patent are invalid.
ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED 13

IV. CONCLUSION

Since we agree with the district court that both “program 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 that all claims in the 

’313 patent are invalid as indefinite. 

AFFIRMED