Addressing construction of claims including means-plus-function claim elements, the US Court of Appeals for the Federal Circuit overturned an International Trade Commission (ITC) plain and ordinary meaning construction in favor of a means-plus-function construction and, as a result, found the claims to be indefinite. Diebold Nixdorf, Inc. v. ITC, Case No. 17-2553 (Fed. Cir. Aug. 15, 2018) (O’Malley, J).

Nautilus Hyosung instigated an ITC § 337 investigation based on allegations of infringement by Diebold of four patents covering automated teller machines. The ITC ultimately found that Diebold violated § 337 based on infringement of six claims. That finding was premised on the ITC’s administrative law judge holding that a term of all asserted claims (cheque standby unit) was not a means-plus-function term subject to § 112, ¶6, and that it would not be indefinite even if it was a means-plus-function term. Diebold appealed.

The Federal Circuit found both that the claim term was a means-plus-function term and that the specification did not provide any corresponding structure, thus rendering the claims indefinite. 

The Federal Circuit first concluded that the claims and specification described the cheque standby unit in purely function terms without reciting any specific structure. The Court next found that the presumption that the term was not a means-plus-function term because it did not have the word “means” had been overcome. In doing so, the Court disagreed with the ITC’s position that a proponent of a means-plus-function interpretation must present extrinsic evidence showing that ordinary artisans would not understand the term to connote sufficient structure. The Court explained that the word “unit” was a generic nonce word similar to “means,” citing its 2015 en banc decision in Williamson v. Citrix Online (IP Update, Vol. 18, No. 6), and distinguished a previous case, Apex v. Raritan Computer (2003), where the word “circuit” was found to connote structure. Finally, the Court discounted Nautilus Hyosung’s expert testimony as only offering a purely functional definition without any structural definitions. 

Having found that the disputed term was a means-plus-function claim element, the Federal Circuit next considered whether the specification disclosed any corresponding structure as required by statute. Finding that it did not, the Court concluded that the term was indefinite under § 112, ¶2.