Hearing Components, Inc. v. Shure, Inc., Appeal No. 09-1364 (Fed. Cir. 2010)

This case has three interesting issues: (1) the definiteness of “terms of degree” claim elements; (2) interpreting means-plus-function claim limitations; and (3) the standard for appellate review of a jury’s non-obviousness determination. In this decision, the resolution of each of these issues favors the patentee, Hearing Components.

Terms of Degree: The patents-in-suit all relate to hearing-aide elements. Claim 1 included a long-preamble with the statement that the device is configured to be “readily installed and replaced by a user.” The district court had difficultly drawing a boundary between devices that are readily installed and those that are not readily installed and therefore found the claim indefinite and invalid. On appeal, the Federal Circuit reversed.

In Datamize, the Federal Circuit held the claim term “aesthetically pleasing” to be indefinite. In the process, however, the court noted that these seemingly loose terms of degree will not be considered indefinite if the patentee “provides some standard for measuring that degree.” In the present case, the court found several hints as to the standard for “readily installed.” First, the patentee had argued that the readily limitation helped the claim avoid prior art – thus defining a category of items that were not readily installed. Second, the patent application discussed user installation “without tools.” The Federal Circuit held that this discussion suggested another way to measure “readily.” Based on these findings, the appellate panel rejected the indefiniteness holding because – in the words of Datamize – the specification “supplies some standard for measuring the scope of the phrase.”

Means-Plus-Function Claims: The patent claimed a “means … for disposably attaching” a duct of the hearing aide to a connector. The specification included several examples, but did not include the specific arrangement of the accused device. The jury found infringement, but the district court flipped that decision in a post-verdict order. On appeal, the Federal Circuit confirmed and reinstated the jury verdict of infringement.

Means-plus-function claims often appear to be broadly written, but are limited to specific structures described in the specification and equivalents to those structures. Thus, a means-plus-function element is infringed if the accused device includes a relevant structure that performs the same function as described in a way that is at least equivalent to one described in the specification.

Here, Federal Circuit held that the jury had permissibly found that the accused product’s “interference fit” was equivalent to the “screw threads or ball-and-socket attachment” disclosed in the application.

There was evidence that the inventors knew of the potential of using an interference fit attachment but chose not to disclose it in the specification. The defendant argued that evidence of prior knowledge should limit the scope of equivalents under a doctrine akin to estoppel. Instead, the Federal Circuit held that the “known interchangeability” weighs in favor of a finding of equivalence.

Reviewing a Non-Obviousness Determination: In John Deere, the Supreme Court divided the issue of obviousness into a series of factual inquiries leading to an ultimate conclusion of whether a patent is obvious. The ultimate question of obviousness is an issue of law reviewed de novo on appeal. However, a jury’s findings regarding the question’s many underlying factual predicates are reviewed for substantial evidence. This structure is normally ignored in a jury decision because the jury is typically not asked to explain its factual predicates. Rather most juries just answer the yes/no question: “Is the claim obvious?” When unpacking the decision on appeal, the Federal Circuit gives the jury the benefit-of-the-doubt by looking for any way that the evidence presented can support the jury’s conclusion. Thus, the question on appeal boils down to whether the factual evidence presented could be sufficient to support the legal conclusion on obviousness.

23 thoughts on “

  1. I’m shocked Ned, quite shocked. I had no idea things were so bad. You’ve alarmed me, but thanks all the same.

  2. Max, no one in the United States, I postulate, has ever seen a MPF claim invalidated precisely because it covers the corresponding structure. If there is another way of performing the same function in the prior art, our courts, in their infinite wisdom, have held that one can argue that the disclosed means is not made obvious by the prior art means.

    MPF are “beautiful” claims for the patent owner. One can never know exactly what they cover, ever. But one thing is virtually certain, unless the precise means disclosed is in the prior art, the patent is valid.

  3. Ned, my impression is that 35 USC 112 6th para provides a court with useful wiggle room in which to do justice. If it wants the claim to come out valid, it can finangle to a narrow enough scope to save the claim. If it divines that the patent owner ought not to prevail, it widens the scope of the claim enough to expose it to fatal prior art attacks on its validity.

    This wiggle room is needed, in any jurisdiction where, in a cutting edge field of science or technology the jury will be “finding” the facts. White-hatted applicants for US patent rights might, for that reason alone, stuff their apps with M+F claims.

    In the instant case, I haven’t read the prior art references. At this point, it seems to me that the instinct of the jury and of the District Court to do justice involved it in fudging claim construction issues enough to give both beggars some part of what they were begging for. On appeal, however, Lourie was having no truck with such fudging, and sacrificed on the altar of legal certainty any well-meaning but harmful Solomonian splitting of the baby.

  4. Max, I have been making this argument for years. I first brought it up in an address to the Federal Circuit Bar Assn. Radar was on the same panel as I and heard what I had to say. He took my speech back to the Federal Circuit, and it at least it appears to have been discussed.

    My speech focused on a picture frame and means for attaching the corners together. I argued that the claim should cover nails, screws and even adhesive even if only a nail were disclosed. The novelty, after all, was not in the particular means for attaching, but in the entire combination that together made the picture frame.

    Now, if the picture frame were old, including a prior art attachment mechanism, a claim using a broad means for attaching element would literally read on the prior art. It should be invalid even if the disclosed means, such as a special form of glue, would be novel.

    Now we have the result in this case where the claim is essentially my example and the result is what I advocated. The vice of the current holding is that the inventor had to include a number of examples in his specification to force the broad construction, but this should not have been necessary.

    But similarly, if the combination itself were old and the only thing distinguishing the claim from the prior art being the disclosed means for attaching, the claim literally reads on the prior art. This places the claim in direct conflict with Section 112, p.2, which requires the claim to clearly point out the novel subject matter. But this lack of clarity is seemingly required by the statute and its interpretation.

    This is unfortunate.

  5. Ned, entirely correct. M+F claims are hugely popular in Europe and so, naturally, have been litigated in countless cases, all over Europe, since for ever and a day.

    But, so what? In the absence of the obfuscating effect of 35 USC 112, which part of an M+F claim element/feature is hard to understand?

    Suppose it is “Means for Cutting”. Suppose the context is an invention in the butter industry, or the concrete buildings industry, or the diamond industry. Where’s the problem?

  6. Max, there is still the matter of state revocation proceedings. I assume MPF have been tested there as well.

    ALL, Section 112, p. 6, was proposed by one of the patent law associations and edited into its final form by Rich and Federico. Anyone familiar with Halliburton can see that what Rich did was to allow MPF claiming, but to include the rule of construction of those claims provided by the lower courts in that case. These same lower courts had found the electronic tuner an infringement when the disclosed tuner was mechanical. From reading the Supreme Court opinion, it is clear they thought electronic tuner was a “new” invention that operated quite differently from the mechanical tuner. But rather than reverse on the grounds that it was not an equivalent, they held that claims functional at the point of novelty were invalid.

    So, in a sense, what Rich wrote in Section 112, p. 6, was a broad overruling of all aspects of Halliburton and by implication, O’Reilly v. Morse. But, since these cases were fundamentally based in the constitution and not in the statutory framework, the could not effectively be reversed. Thus we have the somewhat understandable ruling of the Federal Circuit that MPF equivalents are limited to known equivalents and that they do not extend to new inventions.

    This saves Section 112, p. 6 from a constitutional point of view. But to really bring Section 112, p. 6 in to line with the ROW, we need that MPF equivalents extend, as in this case, to every known way of accomplishing the claimed function in the combination, not just that disclosed in the specification. That should be the meaning of MPF equivalents. If any such way is already exists in the prior art (in the combination) the claim may be invalid or during examination, it may have to be limited by amendment. But that is quite preferable to allowing one to argue that so and so prior art is not the equivalent of the disclosed means when the claim literally reads on the prior art.

    I find it cute that the Fed. Cir. in this case had to accept inventor testimony that he envisioned a broad scope of equivalents. Inventor testimony, however, should not be required. It should be presumed from the form of the claim.

    In other words, I suggest we give MPF clauses the natural scope they deserve while preserving the holding of Halliburton.

  7. Readers, ping keeps saying I have lost the argument on “universality” and have lost “the war”. I don’t see where that happened. Is anybody following the argument? At least one of the protagonists is labouring under a misapprehension. Does any reader feel the urge to help out?

  8. Oh silly me. MaxDrei is technially right at the same time his “universallity” premise is destoyed.

    Congrats Maxie, you win the battle and lose the war.

    Way to go!

  9. readers, when ping writes:

    “once teh EPO is done and passes the application down to be processed in the Member States for the national phase of each Member State? I know that Ron K keeps on pointing this out to you, and somehow you keep on forgetting.”

    he’s making himself look foolish. Ron Katznelson is better informed, and needs no help from ping.

    To clarify: the EPO does NOT hand over processing to the Member States in any “national phase” as an “application” before grant. Rather, it issues a patent and that goes forward, after issue, to be “validated” in whichever countries the patent owner still wants. Article 84, EPC (clarity of claiming) ceases to be a ground of objection at the moment of grant. Once the patent has issued, it’s too late to level Article 84 at the claims of the issued patent, even in EPO opposition proceedings.

  10. Every jurisdiction has the same problem with functional claiming

    I am shocked, shocked I tell you that the EPO, with its clean slate approach, would have a problem with functional claiming as you suggest, Maxie. Do you not also suggest that the EP is perfect in all its ways, having the blessings, as it does, of its clean slate?

    the EPO has the final say on M+F in claims, not the independent, sovereign national courts dotted around the 37 EPC Member States

    But Maxi, isn’t this not quite correct, since the independent, sovereign natioanl courts each have their say only once teh EPO is done and passes the application down to be processed in the Member States for the national phase of each Member State? I know that Ron K keeps on pointing this out to you, and somehow you keep on forgetting.

    Examiners and European patent attorneys are expected to know all this EPO jurisprudence

    Crazy I tell you – having attorneys know the law. Where will you stop with these crazy ideas? (I cannot stop myself from giggling when I consider examiners knowing the law – I thought you learned from hanging out here that examiners do not need to know the law, they make up the law as they please).

    I wonder whether the judges of the Federal Circuit might one day want to read the section on M+F claims in the EPO Examination Guidelines. No, forget that. Silly idea.

    Read it, heck why don’t they just implement it straight off. Oh wait, maybe because the “universality” isn’t so universal, because there are fundamental differences in the rudiments of patent law between different countries (sorry about your “universal” windmill). Maybe that’s why the US patent is still stronger and better, and maybe that’s why those jealous of the stronger and better US patent want to (ahem) make changes to the US patent to make things easier.

    You are right – silly idea indeed.

  11. Ned thanks but no, I haven’t read Morse. Every jurisdiction has the same problem with functional claiming, since the time patents were first invented. For example, England. Have you ever read No-fume v. Frank Pitchford? It is about a hundred years old but nevertheless still instructive today. In fact, it was seized upon and used as a case study when the first EPO Guidelines for Examination were written in the mid 1970′s. I don’t know how many percent of the text of the present day EPO Guidelines is taken up with the matter of functional terms in claims but it is ground intensively tilled and well understood. Europe gets by OK, without having to write M+F into the EPC.

    Of course Europe took into account all it could learn from the USA, when writing its own pan-European Patent Convention. It is not just happenstance that explains the lack of a M+F clause in the EPC or its Implementing Regulations.

    Actually Ned, this is another reason to be cheerful about the situation in Europe, that a lack of clarity in a claim is a reason to refuse to issue the claim but, once issued, no ground to revoke it. Thus, the EPO has the final say on M+F in claims, not the independent, sovereign national courts dotted around the 37 EPC Member States. Good so, IMHO.

    By now, the EPO has amassed considerable experience (thousands of cases, over 30 years) in judging the scope of issued M+F claims in full-blown, inter-partes, disputed opposition proceedings. Examiners and European patent attorneys are expected to know all this EPO jurisprudence as well as they know the back of their hand. It does not flip-flop every 5 years. It has always been essentially the same, from the beginning, just increasingly rich in wisdom (or wrinkles if you like).

    I wonder whether the judges of the Federal Circuit might one day want to read the section on M+F claims in the EPO Examination Guidelines. No, forget that. Silly idea.

  12. Max, the US has long had a “problem” with functional claiming — claiming a machine in terms of what it does rather than what it is. See, O’Reilly v. Morse.

    Have you ever read that case and the discussion with regard to claim 8?

    Now, while I support the theory behind that case, I also support some liberality with the scope of MPF equivalents. I think they should normally extent to known substitutes. But that is not the way the law developed under the Fed. Cir. until recently. Until recently, you got the corresponding structure and little more. That was wrong, IMHO.

  13. Bob, you write:

    “add a few M+F claims into the mix because you never know what the law regarding them will be in five years”

    Thanks for the tip. This period of 5 years you cite. It’s not special to 2010 is it. It’s a rolling period, right?

  14. The lesson is always add a few M+F claims into the mix because you never know what the law regarding them will be in five years.

  15. The use of M+F language in claims is ubiquitous, perhaps because it is the best way to achieve coverage commensurate with the invention that amounts to an inventive concept.

    So every jurisdiction needs an effective way to handle it, namely, to subject every such claim to effective examination whether it embraces subject matter that is not new, is obvious, or is not enabled, or that the specification fails to provide support over the full width of the claim and, if so, to find the claim invalid.

    The USA, uniquely, has a problem with finding invalid a claim duly issued by the granting authority. We see this manifested in a number of things, and one of them is the bizarre sentence belatedly added by Congress to 35 USC 112 which tells us that the scope of a M+F claim is not what everybody, otherwise, would suppose it to mean.

    So, yes readers, from this case I do derive support for my thesis that there are many aspects of patent law that are “universal”. Only in the USA is there a difficulty to decide, by reference to what is or is not “equivalent”, the meaning of a M+F term in a claim.

    I refrain from offering any comment on whether that is a good thing. But it certainly has unfortunate effects for clients of US patent lawyers, who are commissioned by their clients to get optimal claims in Europe but who don’t come to the idea of doing it with M+F claims.

    Some readers (I hope many in Asia) will by now have grasped that a set of claims optimal for the USA is not optimal for ROW, and vice versa.

  16. Indeed it is

    Perhaps you have managed to misunderstand the sarcasm.

    Well done. My compliments.

  17. This time you have managed to understand me, pingie. Indeed it is.

    Well done. My compliments.

  18. Something I don’t understand is this.

    If M+F means 1) “what is illustrated and not much more” then the claim has narrow scope.

    If M+F means 2) “every M under the sun capable of delivering that F” (which is what it means to a lay person anywhere, or to a patent lawyer anywhere else but the USA), then the scope of the claim is yawningly wider.

    So, validity attacks that bounce off claim 1) can be instant death to claim 2).

    So, how is a poor patent attorney supposed to begin to advise (and her poor client to make any business decision based on that advice) whether a M+F claim is or is not valid? Must every such client now go to the Federal Circuit in order to find out what such a claim covers, and whether or not that claim is valid?

  19. I am amazed. Radar was part of the panel. I am amazed that he did not dissent. He was the one who over the years was the most anal about MPF, limiting MPF equivalence to virtually exact copies of the disclosed structure, differing only “insignificantly.”

    Now this?

    What is the world coming to? Does this man have a heart? Has he come in his late age to understand the concept of fairness and justice?

    Amazing.

  20. “Means-plus-function claims often appear to be broadly written, but are limited to specific structures described in the specification and equivalents to those structures. ”

    Is mere mention of the “specific structures” in the spec sufficient or must they also be shown in the drawings???

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