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Diebold Nixdorf, Inc. v. International Trade Commission

Expert Testimony Unnecessary to Find That Term Lacks Structure Necessary to Avoid § 112(6)

Diebold Nixdorf, Inc. v. International Trade Commission, __ F.3d __, 2018 WL 3862648 (Fed. Cir. Aug. 15, 2018) (Prost, Bryson, O’MALLEY) (ITC) (3 of 5 stars)

Fed Cir reverses finding of § 337 violation. The ITC erred in failing to find the asserted claims invalid due to a means-plus-function limitation unsupported by structure in the specification. The term in question, “cheque standby unit,” is a means-plus-function limitation notwithstanding the absence of the word “means.” The opinion rejects the ITC’s argument that Diebold’s failure to present expert testimony on this issue was dispositive. “[I]n appropriate cases, a party advocating that a claim limitation that does not recite the word ‘means’ is subject to § 112, para. 6 can overcome the presumption against its application solely by reference to evidence intrinsic to the patent.” Op. at 13. The opinion also rejects the ITC’s reliance on expert testimony presented by the patent owner that “cheque standby unit” had structural meaning to one skilled in the art. The definitions offered by this expert were “purely functional” and did not “explain with any degree of definiteness what structure or class of structures a person of ordinary skill would understand the term to encompass.” Id. at 15. The opinion thus distinguishes cases such as Inventio, 649 F.3d 1350 (Fed. Cir. 2011), Apex, 325 F.3d 1364 (Fed. Cir. 2003), and Greenberg, 91 F.3d 1580 (Fed. Cir. 1996). This case is analogous to Advanced Ground Information Systems, 830 F.3d 1341 (Fed. Cir. 2016), which held “symbol generator” to be a means-plus-function term. Having concluded that the term invokes § 112, ¶ 6, the opinion then finds insufficient support in the specification to provide structure.

KEYWORDS: INTERNATIONAL TRADE COMMISSION, MEANS-PLUS-FUNCTION, INDEFINITENESS (YES); SECTION 112; INVALIDITY (YES)