In ROBERT BOSCH, LLC v. SNAP-ON INC., Appeal No. 2014-1040, the Federal Circuit agreed that certain claim terms invoked 35 U.S.C. § 112, sixth paragraph, and affirmed that the claims were indefinite because the specification did not disclose corresponding structure for these terms.

Bosch sued Snap-On for patent infringement. Snap-On asserted that two claim terms, “program loading device” and “program recognition device,” are means-plus-function terms under 35 U.S.C. § 112, sixth paragraph and are indefinite.  The district court presumed that “program recognition device” invoked § 112, sixth paragraph, because claim 1 recited the phrase “by means of,” and found this claim term indefinite.  As for “program loading device,” the district court presumed that it did not invoke §112, sixth paragraph, based on the lack of the word “means,” but still found it was an indefinite means-plus-function term.

The Federal Circuit affirmed the district court’s judgment of invalidity based on indefiniteness, but held that the district court had erred in applying the presumption that “program recognition device” is a means-plus-function term.  The Federal Circuit found no precedent holding that the presumption in favor of §112, sixth paragraph is triggered by a claim’s use of the expression “by means of.”  Nevertheless, the error was harmless because, even without a presumption, the term “program recognition device” invokes §112, sixth paragraph.  Because the patent’s disclosures are solely functional, one of ordinary skill in the art could not find in the specification any disclosure of a particular structure.