這是1998的CAF的判例
算是有點老了
主要是想看英文字XXer(例如本案的detector)和means plus function之間的關係
標題是研讀本案之後另外衍生的問題
United States Court of Appeals for the Federal Circuit
98-1160
PERSONALIZED MEDIA COMMUNICATIONS, L.L.C.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
And
DIRECTV, INC., UNITED STATES SATELLITE BROADCASTING CO.,
HUGHES NETWORK SYSTEMS, and
HITACHI HOME ELECTRONICS (AMERICA), INC.,
Intervenors,
And
THOMSON CONSUMER ELECTRONICS, INC.,
TOSHIBA AMERICA CONSUMER PRODUCTS, INC., and
MATSUSHITA ELECTRIC CORPORATION OF AMERICA,
Intervenors.
爭議的claim為
1.A system for identifying a predetermined signal in a television
program transmission in which a plurality of signal types are
transmitted[,] said signal being transmitted in a varying location or a
varying timing pattern, said television program transmission being
separately defined from standard analog video and audio television,
said system comprising:
a digital detector for receiving said transmission
and detecting said predetermined signal in said transmission based on
either a specific location or a specific time; and
a controller operatively connected to said detector
for causing said detector to detect said predetermined signal based on
either a specific location or time, said controller being programmed
with either the varying locations or the varying timing pattern of said
signal.
爭議的重點是digital detector是否為means plus function
奇怪的是controller怎麼就沒事了
CAFC利用外部證據字典的解釋認為"不是"
Instead, as noted by the ALJ by reference to dictionary definitions,
"detector" had a well-known meaning to those of skill in the electrical
arts connotative of structure, including a rectifier or demodulator. No
other extrinsic evidence, including the expert testimony, and no
evidence intrinsic to the patent casts doubt on this conclusion.
Moreover, neither the fact that a "detector" is defined in terms of its
function, nor the fact that the term "detector" does not connote a
precise physical structure in the minds of those of skill in the art
detracts from the definiteness of structure.
See Greenberg, 91 F.3d at 1583, 39 USPQ2d at 1786 (quoted
supra).
Even though the term "detector" does not specifically evoke a
particular structure, it does convey to one knowledgeable in the art a
variety of structures known as "detectors." We therefore conclude that
the term "detector" is a sufficiently definite structural term to
preclude the application of § 112, ¶ 6.
ALJ是ITC美國貿易委員會的行政法官
依上述文字來看
當時的行政法官並未採用字典作為外部證據
我自己去查了字典
的確有字典收錄detector且認為其包含rectifier and demodulator
且說明此定義用於"電視"領域
恰巧這個爭議專利和電視有關
因此重點不在於rectifier and demodulator是否揭露了structure
而在於字典在爭議專利的領域解釋了這個元件
表示這個元件在該領域是well-known device
在means plus function的議題上
well-known device即使沒有限定於一特定的結構
也讓該領域習知技藝者了解到有哪些結構可以作為此well-known device
（也就是說其範圍頗為明確）
因為其包含的範圍（結構）頗為明確
所以算是在claim中揭露了結構
因此不算是以function來界定範圍
所以不是means plus function
接下來ITC認為說明書中沒有揭露任何一種digital detector的特定結構
違反USC 112 2nd paragraph的規定
應該是indefinite
The Commission makes much of the fact that the specification is
otherwise silent concerning the structure of a "digital detector," and
it notes that the "digital detectors" of the circuit diagrams do not
reveal circuit elements constituting such a device, but only portray
these devices as mere functional blocks.
See, e.g., ‘277
patent, Fig. 2A. Moreover, the Commission relies on expert testimony
stating generally that a "digital detector" was not adequately
disclosed in the patent and could not be built by those of ordinary
skill.
See, e.g., Initial determination at 77 (testimony of
Ciciora: "there is no clue that any engineer of ordinary skill . . .
could begin to put pencil to paper and say here is how I would build
the contents of [the digital detector] block. It is completely
underspecified.");
id. at 79 (testimony of Williams: "[The patent] shows a digital detector. It does not go into detail of how it may work . . . .").
CAFC認為ITC引用的法條不對
那應該是跟USC 112 1st paragraph的enablement有關
因為第二段只跟claim本身有關
第二段才去討論claim和spectification的關係
We conclude that the evidence relied upon by the Commission does not
indicate imprecision of the claims. Instead, it is relevant, if at all,
only to the sufficiency of the written description to enable the
practice of the invention of the claims, which is a ground of
invalidity under § 112, ¶ 1.
See In re Borkowski, 422
F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970) (noting that a claim of
clear scope that is not adequately supported by an enabling disclosure
commensurate with that scope is objectionable under § 112, ¶ 1, not §
112, ¶ 2);
In re Ehrreich, 590 F.2d 902, 906, 200 USPQ 504, 508
(CCPA 1979) ("[§ 112, ¶ 2] pertains only to claims. . . . Agreement, or
lack thereof, between the claims and the specification is properly
considered only with respect to [§ 112, ¶ 1]; it is irrelevant to
compliance with [§ 112, ¶ 2]");
cf. Miles Labs., Inc., v. Shandon, Inc.,
997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (dismissing
the defendant’s argument as "irrelevant to definiteness under § 112,
¶ 2. The invention’s operability may say nothing about a skilled
artisan’s understanding of the bounds of the claim. [Defendant’s]
argument is possibly relevant, however, to the enablement requirement
of § 112, ¶ 1, or to utility under § 101.").
由於ITC沒有提起enablement的爭論
因此不去討論說明的寫法是否違反法令
弔詭的是CAFC加了一段話
We are aware that the ALJ held the claims invalid under § 112, ¶ 1 for
lack of enablement, specifically focusing on the "digital detector"
limitation. However, we express no opinion on any theory of invalidity
under § 112, ¶ 1 because such a ground of decision is not before us as
it was not reviewed by the Commission.
See note 3,
supra,
and accompanying text. In any event, citation of evidence bearing
solely on § 112, ¶ 1 infirmities does not aid the Commission in
supporting the ALJ’s indefiniteness holding under § 112, ¶ 2, and this
holding is therefore reversed
CAFC說他們有注意到行政法官引用§ 112, ¶ 1判定專利無效
但是上訴時ITC沒提到這一點
所以CAFC也愛莫能助（我的解讀）
那是不是表示CAFC認為well-known device必須合乎§ 112, ¶ 1的enablement的規定?
MPEP規定prior art不需揭露其實施方式(1991的判例)
well-known device不就是prior art嗎
建議:
電路最好還是用circuit
盡量別用XXer
尤其是發明的重點
省去means plus function的爭議
也就省去well-known device的揭露問題
文章定位：
