Solely functional descriptions of non-well-known claim elements in the specification are not sufficient to link them to any particular structure and therefore require invocation of a means-plus-function interpretation. Here, for example, the lack of any structural descriptions in the specification of the claimed “program recognition device” and “program loading device” required that they be interpreted as means-plus-function elements (and therefore indefinite per se for the same reasons). It may therefore be best to provide in the specification several examples of hardware components that may be used to implement any non-well-known claim elements, rather than relying on the extrinsic knowledge of one skilled in the art to avoid a means-plus-function interpretation.
Background / Facts: The patent being asserted here is directed to an automotive diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed. The claims recite an external diagnostic tester that is made up of a “program recognition device” and a “program loading device.” Although the specification describes their functionality, the specification contains no figures and provides no other hardware components that may be used to implement either the “program recognition device” or the “program loading device.”
Issue(s): Whether the “program recognition device” and the “program loading device” should be interpreted as means-plus-function terms under § 112, ¶ 6 (and therefore be held indefinite for lack of corresponding structure in the specification).
Holding(s): Yes. As an initial matter, the court noted that it had previously “found the word ‘device’ to be a non-structural, ‘nonce’ word,” and observed that in this instance “the other words do nothing more than identify functions for the ‘device’ to perform.” Moreover, the “patent’s specification does not contain a single reference to the structure” of the claimed devices. Instead, “all of the proffered citations from the specification merely explain its function.” “Because the [] 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.” The court then went on to distinguish this case from another case where it held that the term “modernizing device” fell outside § 112, ¶ 6, because that case included an “extensive structural description in the intrinsic record,” illustrating “a processor, a signal generator, a converter, memory, and signal receiver elements.”