Lack of Clear Link Between "Means For" Language and Any Corresponding Structure in Specification Makes Claim Indefinite

Southwestern Bell Telephone Company v. Arthur A. Collins, Inc., [2007-1577] (May 27, 2008) [MOORE, Gajarsa, Clevenger] NON-PRECEDENTIAL The Federal Circuit affirmed judgment that the claims of the ’907 patent are invalid for indefiniteness; affirmed the grant of summary judgment that claims 4-14 of the ’589 patent are invalid for improper reexamination amendment; affirmed the grant of summary judgment of no literal infringement of claims 1-14 of the ’589 patent for lack of a “control store”; affirmed the claim construction of the “randomly” terms in the ’589 patent claims; reversed the judgment that the “randomly receive” limitation in the ’589 patent claims is not literally present in the accused combination; and the judgment that prosecution history estoppel applies to exclude Collins from offering evidence of equivalents of certain claim limitations for claims 1-3 of the ’589 patent.
BRIEF: The Federal Circuit affirmed that the term “means for measuring,” present in every claim of the ’907 patent, cannot be construed because there is no clear link or association between (1) the “means for measuring” claim language and (2) any corresponding structure in the specification. The patentee had a duty to link the claimed function of measuring the timing adjustment interval to a structure in the specification as the price for being allowed to express the claim as a means-plus-function claim under 35 U.S.C. § 112, ¶ 6. The Federal Circuit affirmed that the claims were improperly amended during reexamination. Claim amendments during reexamination are limited to “amendment in light of prior art raising a substantial new question of patentability.” The Federal Circuit held that the patentee cannot use reexamination for the purpose of amending its claims to address an adverse claim construction. The Federal Circuit affirmed the grant of summary judgment for lack of a “control store” in the accused device. The Federal Circuit affirmed the claim construction of “randomly” but reversed the judgment that there was no literal infringement because the patentee did not have adequate notice to contest the issue. The Federal Circuit affirmed that prosecution history applied because the patentee amended the claims in response to a rejection. The Federal Circuit rejected the patentee’s attempt to claim that the amendment was tangential, stating “An amendment is directly, and not tangentially, related to patentability when an applicant’s narrowing additions to a claim along with an applicant’s own statements in the prosecution history indicate that the amendment was made to distinguish over a reference.”