Filed: Sep. 24, 2007
Latest Update: Feb. 22, 2020
Summary: NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit 2007-1108 MAURICE MITCHELL INNOVATIONS, L.P., Plaintiff-Appellant, v. INTEL CORPORATION, Defendant-Appellee. Richard L. Schwartz, Whitaker, Chalk, Swindle & Sawyer, L.L.P., of Fort Worth, Texas, argued for plaintiff-appellant. Of counsel on the brief was Manny D. Pokotilow, Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., of Philadelphia, Pennsylvania. Robert A. Van Nest, Keker & Van Nest LLP, of
Summary: NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit 2007-1108 MAURICE MITCHELL INNOVATIONS, L.P., Plaintiff-Appellant, v. INTEL CORPORATION, Defendant-Appellee. Richard L. Schwartz, Whitaker, Chalk, Swindle & Sawyer, L.L.P., of Fort Worth, Texas, argued for plaintiff-appellant. Of counsel on the brief was Manny D. Pokotilow, Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., of Philadelphia, Pennsylvania. Robert A. Van Nest, Keker & Van Nest LLP, of ..
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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1108
MAURICE MITCHELL INNOVATIONS, L.P.,
Plaintiff-Appellant,
v.
INTEL CORPORATION,
Defendant-Appellee.
Richard L. Schwartz, Whitaker, Chalk, Swindle & Sawyer, L.L.P., of Fort Worth,
Texas, argued for plaintiff-appellant. Of counsel on the brief was Manny D. Pokotilow,
Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., of Philadelphia, Pennsylvania.
Robert A. Van Nest, Keker & Van Nest LLP, of San Francisco, California, argued
for defendant-appellee. With him on the brief were Christa M. Anderson and Steven A.
Hirsch.
Appealed from: United States District Court for the Eastern District of Texas
Judge Leonard Davis
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1108
MAURICE MITCHELL INNOVATIONS, L.P.,
Plaintiff-Appellant,
v.
INTEL CORPORATION,
Defendant-Appellee.
___________________________
DECIDED: September 24, 2007
___________________________
Before RADER, MOORE, Circuit Judges, and YEAKEL, District Judge*.
RADER, Circuit Judge.
The United States District Court for the Eastern District of Texas granted Intel
Corporation's ("Intel") motion for summary judgment that claim 1 of U.S. Patent No.
4,875,154 ("the '154 patent") is invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2.
Maurice Mitchell Innovations, L.P. v. Intel Corp., No. 2:04-CV-450 (E.D. Tex. Dec. 11,
2006) ("Final Judgment"); Maurice Mitchell Innovations, L.P. v. Intel Corp., No. 2:04-CV-
450 (E.D.Tex Nov. 22, 2006 ("Opinion"); Maurice Mitchell Innovations, L.P. v. Intel
Corp., No. 2:04-CV-450 (E.D. Tex. Jun. 21, 2006) ("Claim Construction Opinion").
Because the district court correctly construed the claim term "means for causing" as a
* Honorable Lee Yeakel, District Judge, United States District Court for the Western
District of Texas, sitting by designation.
means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 and correctly found the
specification did not contain any corresponding structure, this court affirms.
I
The United States Patent and Trademark Office issued the '154 patent, entitled
Microcomputer with Disconnected, Open, Independent, Bimemory Architecture,
Allowing Large Interacting, Interconnected Multi-microcomputer Parallel Systems
Accomodating [sic] Multiple Levels of Programmer Defined Heirarchy [sic], on October
17, 1989 from an application filed on June 12, 1987. The patent abstract states:
A Bimemory Independent CPU (BICPU) microcomputer which is
comprised of a known CPU chip provided with additional circuitry to
enable CPU to interact in a multi BICPU microcomputer system. Each
BICPU microcomputer in a system is supplied with an assigned standard
memory mechanically and logically connected to it's [sic] BICPU's "A" bus
circuits. The BICPU microcomputer is also provided with connectors
enabling the CPU to be connected to system buses. Any number of
BICPU microcomputers can be logically chained, linked and treed in a
simple logical bimemory independent pattern infinitely in as many
dimensions as is reasonably desired, using one standard set of dedicated,
simple, single line conductors (system buses) to mechanically
interconnect any "B" or "C" bus curcuits [sic] of two different BICPU
microcomputers.
'154 Patent Abstract. Generally, the patent describes a BICPU computer system
"comprised of a known CPU chip with additional circuitry to enable the CPU to interact
in a multi BICPU microcomputer system." '154 Patent col.7 ll.3-6. According to the
specification, the invention allows "[a]ny number of BICPU microcomputers [to] be
logically chained, linked and treed in a simple logical bimemory independent pattern
infinitely in as many dimensions as is reasonably desired, using one standard set of
dedicated, simple, single line conductors (system buses) to mechanically interconnect
2007-1108 2
any 'B' or 'C' bus circuits of two different BICPU microcomputers." '154 Patent col.7
ll.12-19. Claim 1 reads:
A microcomputer data processing apparatus, comprising:
[1] a Central Processing Unit (CPU),
[2] a path configuring means,
[3] path control circuits connecting said CPU to said path configuring
means,
[4] a plurality of contacts comprised of a plurality of distinct sets,
[5] wherein said CPU further comprises a dedicated memory address
circuit, a dedicated memory data circuit, a dedicated memory
control circuit and a dedicated power circuit,
[6] wherein said path configuring means further comprises a dedicated
memory address circuit, a dedicated memory data circuit and a
dedicated memory control circuit,
[7] wherein each dedicated memory address, data, and control circuit
includes a plurality of dedicated memory address, data, and control
lines respectively, wherein
[8] said memory control lines are comprised of a read/write line, timing
lines and status lines,
[9] first switch means comprised of at least three distinct parts of
connecting said dedicated memory address, data, and control
circuits of said path configuring means to each of said first three
sets of contacts, and
[10] second switch means for connecting said dedicated memory address,
data, and control lines of said path configuring means to said
dedicated memory address, data, and control lines of said CPU
respectively,
[11] wherein said first and second switch means assume a non signal-
conducting state when said CPU power circuit is not supplied with
power,
[12] wherein said lines of said CPU an said contacts assume a non-signal
conducting state when said first and second switch means are in
said non-signal conducting state,
[13] means for causing said first and second switch means to remain in
said non signal-conducting state upon application of power to said
CPU power circuit and to assume a signal-conductive state upon
receipt of an appropriate signal from said CPU, and to
[14] assume a non signal-conducting state upon receipt of an appropriate
signal from said CPU.
'154 Patent col.90 l.59 – col.91 l.37 (emphases and [limitation numbers] added).
2007-1108 3
Maurice Mitchell Innovations, L.P. ("Mitchell") brought suit against Intel in the
United State District Court for the Eastern District of Texas alleging a number of Intel's
products infringe Claim 1 of the '154 patent. In construing the claims, the district court
adopted the claim construction of District Judge Susan Illston of the United States
District Court for the Northern District of California. Claim Construction Opinion; see,
Maurice Mitchell v. Samsung Electronics Co., Ltd., No. C 01-0295 SI (N.D. Cal. Jan. 29,
2002). Specifically, the district court construed "first switch means," "second switch
means," and "means for causing" as means-plus-function limitations governed by 35
U.S.C. § 112, ¶ 6. Id. The district court then determined that the '154 patent
specification did not disclose structure for the "switch means" limitations and the "means
for causing" limitation. Opinion. As a result, the district court found Claim 1 of the '154
patent indefinite and therefore invalid as a matter of law.
Id.
II
This court reviews a district court's grant of summary judgment without
deference, drawing all justifiable inferences in favor of the nonmovant. Genentech, Inc.
v. Amgen, Inc.,
289 F.3d 761, 767 (Fed. Cir. 2002). Claim construction is a matter of
law that this court reviews without deference. Cybor Corp. v. FAS Techs., Inc.,
138
F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v. Westview Instruments, Inc.,
52
F.3d 967, 979 (Fed. Cir. 1995), aff’d,
517 U.S. 370 (1996). "The review of
indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law
without deference." SmithKline Beecham Corp. v. Apotex Corp.,
403 F.3d 1331, 1338
(Fed. Cir. 2005).
2007-1108 4
"A patent issued from the United States Patent and Trademark Office (PTO)
bears the presumption of validity under 35 U.S.C. § 282. An accused infringer,
therefore, must prove patent invalidity under the clear and convincing evidentiary
standard." Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365
(Fed. Cir. 2004). Specifically, "[t]he claims as granted are accompanied by a
presumption of validity based on compliance with, inter alia, § 112 ¶ 2." S3 Inc. v.
NVIDIA Corp.,
259 F.3d 1364, 1367 (Fed. Cir. 2001).
As stated in § 112 ¶ 2, "[t]he specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention." Claims "particularly point[ ] out and distinctly
claim[ ]" the invention when one of ordinary skill in the art would understand the scope
of the invention when the claims are read in conjunction with the specification. Default
Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir.
2005); 35 U.S.C. § 112 ¶ 2. But, if an applicant "employs means-plus-function language
in a claim, one must set forth in the specification an adequate disclosure showing what
is meant by that language." In re Donaldson,
16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
banc); 35 U.S.C. § 112 ¶ 6. Therefore, "[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 Technologies Corp.,
490 F.3d 946, 950
(Fed. Cir. 2007).
III
The district court found that "means for causing" was a means-plus-function
limitation without any descriptive corresponding structure within the specification. The
2007-1108 5
only possible structure corresponding to the claimed function appears at Col.24 l.67 to
Col.25 l. 56. Opinion, slip op. at 8. The district court then determined this passage did
not contain any structure.
As illustrated by the claim language in limitation 13, the "means for causing"
controls the first and second switch means. In other words, the "means for causing"
would need a structure (i.e., device or driver) to control the function of the switch
means. Mitchell contends that the '154 patent specification contains an adequate
disclosure corresponding to the "means for causing" limitation to satisfy § 112 ¶ 2.
Mitchell argues that the district court incorrectly limited the corresponding structure to
the disclosure at Col.24 l.67 to Col.25 l.56 when the following additional passages also
disclose structure: Col.15, ll.40-56; Col.19, line 34 to Col.20, line 5; Col.13, ll.11-19;
Col.7, ll.37-44; Col.44, ll.21-46; Col.89, ll.14-49; Col.90, ll.16-30; and Col.16, ll.48-53.
Like the district court, however, this court discerns little, if any, structure for
"means for causing" in the specification and no disclosed link between that purported
structure and the claimed function. This court also credits the district court's finding that
Mitchell's counsel admitted during the summary judgment hearing that the Col.24 l.67 to
Col.25 l.56 passage does not include any structure linked to the claimed function.
Maurice Mitchell Innovations v. Intel Corp., 2:04cv450, slip op. at 35 (E.D. Tex. Sept.
28, 2006) (Transcript of Pretrial and Motion Hearing). Beyond that passage, however,
this court finds no specific structure disclosed anywhere in the specification to carry out
the "means for causing" function.
Mitchell also offers another source of structure for the claimed means. The
specification refers to the MCS6520 Peripheral Interface Adaptor ("PIA"). '154 Patent
2007-1108 6
col.15 ll.40-55. The MCS6520 is a complex integrated circuit (i.e., chip) containing
numerous individual circuits which functions as an interface between a microprocessor
and peripheral devices such as printers, displays and the like. Mitchell contends that
the MCS6520 contains tri-state circuitry or tri-state drivers and that a person of ordinary
skill in the art would understand the tri-state structure in the MCS6520 to be capable of
performing the "means for causing" function.
While the MCS6520 may contain tri-state or driver type circuits, the specification
does not identify the tri-state circuits in the MCS6520 as the structure to carry out the
"means for causing" limitation. The mere mention of a complicated integrated circuit,
comprised of hundreds if not thousands of circuits, is much too broad to sufficiently
indicate the precise "means for causing" structure to a person of ordinary skill in the art.
See Med. Instrumentation & Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed.
Cir. 2003) ("It is important to determine whether one of skill in the art would understand
the specification itself to disclose the structure, not simply whether that person would be
capable of implementing that structure."). In other words, as the district court noted, the
MCS6520 is both too broad and not linked to the "means for causing" limitation.
Opinion, slip op. at 8-9.
Mitchell also attempts to identify structure in a variety of generalized passages in
the specification. This court has examined these passages and finds no specific
structure. Mitchell only states that "[t]hese passages are additional disclosures of the
details of the structure, readily apparent to a person of ordinary skill in the art." In effect,
Mitchell merely references various passages in the specification without providing any
information to show structure corresponding to "means for causing." Mitchell appears to
2007-1108 7
be arguing that a person of ordinary skill in the art would be able to ascertain the
corresponding structure by combining a variety of passages in the specification with
their knowledge of the art. However, "in order for a claim to meet the particularity
requirement of ¶ 2, the corresponding structure(s) of a means-plus-function limitation
must be disclosed in the written description in such a manner that one skilled in the art
will know and understand what structure corresponds to the means limitation." Atmel
Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). Thus, the
statute requires more than just the possibility that an artisan of ordinary skill may be
able to figure out the corresponding structure. The quid pro quo for using a means-
plus-function limitation requires specificity in reciting structure and linking that structure
to the limitation.
Id. Mitchell does not carry out its part of the quid pro quo bargain.
This court sustains the finding that claim 1 is indefinite under U.S.C. § 112, ¶ 2.
This court need not reach the "switch means" and "path configuring means"
limitations because the district court's decision can be affirmed solely on the "means for
causing" limitation.
IV
Because the district court correctly construed the claim term "means for causing"
as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 and correctly found the
specification did not contain any corresponding structure for this limitation, this court
affirms.
AFFIRMED
2007-1108 8
COSTS
Each party shall bear its own costs.
2007-1108 9
