In affirming a district court decision finding two patents in suit to be "not invalid," the U.S. Court of Appeals for the Federal Circuit has presented a primer on various §112, ¶6 claim construction issues. Creo Products, Inc. v. Presstek, Inc., Case No. 01-1634, 02-1023 (Fed. Cir. Sept. 17, 2002).
First, in rejecting Creo’s argument that Presstek impermissibly broadened the scope of a §112, ¶6 claim element during a reexamination, the Federal Circuit stated that the disclosed structure corresponding to a §112, ¶6 claim element must be measured by the recited function as expressed in the claim element—not in the specification. In this instance, the Court found, in the context of an offset lithography patent, that a recited "means for offsetting," which was originally recited as performing the function of correcting imaging errors, did not require structure for correcting all four types of errors described in the patent. Thus, the corresponding disclosed structure, a computer programmed with offset correcting algorithms, was not limited to a computer programmed to correct for all four types of errors.
Second, Creo contended invalidity on the basis that the specification did not disclose adequate structure to support several §112, ¶6 claim elements. On this issue the Court instructed "[P]roper application of §112, ¶6 generally reads the claim element to embrace distinct and alternative described structures for performing the claimed function. Specifically, "disclosed structure includes that which is described in a patent specification, including any alternative structures identified. …" Accordingly, where the specification discloses different alternative embodiments, the claim is valid even if only one embodiment discloses corresponding structure.
Moreover, the Court noted that "knowledge of one skilled in the art can be called upon to flesh out a particular structural reference in the specification for the purpose of satisfying the statutory requirement of definiteness."
In the present case, where Presstek offered expert testimony that the structures disclosed in the specifications of the patents as corresponding to each of the two disputed limitations were well known in the art; the patents characterized the corresponding structures as "conventional" and "standard" in patent applications filed prior to the filing of the subject patents; and Creo did not present any evidence to rebut Presstek’s expert’s testimony that one skilled in the art would not have known what structures correspond to the disputed limitations, the Court held that Creo had "not made a sufficient showing of indefiniteness to overcome the presumption of validity. …"
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