Federal Circuit Summary

Before Prost, Bryson, and O’Malley. Appeal from the United States International Trade Commission (“ITC”).

Summary: Evidence intrinsic to a patent may be sufficient to overcome the presumption that § 112 ¶ 6 does not apply.

The ITC found that Diebold violated § 337 of the Tariff Act of 1930 by importing components of automated teller machines (“ATMs”) that infringe claims of a patent owned by Hyosung TNS Inc. and Nautilus Hyosung America, Inc. Diebold appealed.

The Federal Circuit reviewed the legal determinations of the ITC de novo, and the Federal Circuit reversed the ITC’s decision. The Federal Circuit held that the term “cheque standby unit” recited in the claims at issue is a means-plus-function term subject to 35 U.S.C. § 112 ¶ 6, which lacks corresponding structure disclosed in the specification. Although the term did not recite the word “means,” the Federal Circuit found that Diebold overcame the presumption that § 112 ¶ 6 does not apply. Diebold showed that the term “cheque standby unit” both fails to recite sufficiently definite structure and recites a function without reciting sufficient structure for performing that function. Rejecting the ITC’s argument that Diebold must provide evidence extrinsic to the patent, the Federal Circuit found that Diebold can overcome the presumption solely by reference to evidence intrinsic to the patent. Diebold’s failure to contradict Hyosung’s expert’s testimony was also not fatal. Hyosung’s expert did not introduce any evidence to support his assertion that “cheque standby unit” is a term commonly understood by persons of ordinary skill in the art to denote a device or class of devices, nor did he explain with any degree of definiteness what structure or class of structures a person of ordinary skill in the art would understand the term to encompass. Examining the intrinsic evidence, the Federal Circuit found that the claims and specification did not recite any structure for the “cheque standby unit” and ultimately concluded that the claims at issue are invalid for indefiniteness.