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The lack of a description in the summary and objects section of a patent specification cannot be grounds for holding a claim invalid for failing to describe the structure when there is specific language elsewhere describing the function of the invention in detail, the U.S. Court of Appeals for the Federal Circuit held May 24. William A. Budde v. Harley-Davidson, Inc., et al., Nos. 99-1533, -1534, Fed. Cir. “In construing terms used in patent claims, it is necessary to consider the specification as a whole, and to read all portions of the written description, if possible, in a manner that renders the patent internally consistent,” the court said. A panel of the court vacated and remanded to the U.S. District Court for the Northern District of California a finding that Harley-Davidson Inc. did not infringe on William A. Budde’s patent. The district court had based its finding on the conclusion that the specification lacked the required structure referenced in a means-plus-function claim. PATENT CLAIMS The patent describes a fuel injection conversion system for a type of engine customarily used in Harley-Davidson motorcycles, suitable for each of the three types of ignition systems used in those engines. The patent describes an “electronic sensing means” for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug. The claimed advantage over the prior art is the elimination of the need for adding an electromechanical device for generating the needed timing information by deriving that information electronically through detecting the low-voltage timing pulses produced in the engine’s existing ignition system. The invention described in the patent feeds those pulses to a control unit, which determines when each cylinder needs to be charged with fuel. After Budde filed a complaint for infringement against Harley-Davidson, the district court interpreted the “electronic sensing means” limitation as requiring that the means must sense the pulse from the ignition coil that fires the spark plugs, and held the specification contained no structure corresponding to that function. RULING ON APPEAL On appeal, the Federal Circuit noted that for a court to hold that a claim containing a means-plus-function limitation lacks a disclosure of structure necessarily means that the court finds the claim in question indefinite, and thus invalid. Because the claims of a patent are afforded a statutory presumption of validity, it said, a challenge to a claim containing a means-plus-function limitation as lacking structural support requires a finding, by clear and convincing evidence, that the specification lacks disclosure of structure sufficient to be understood by one skilled in the art as being adequate to perform the recited function. IMPROPER NARROWING Budde argued that the lower court erred by impermissibly narrowing the claimed function to require electronic sensing, in particular by finding that the structure corresponding to the claimed function could not be Budde’s asserted structure that sensed the position of the cam shaft. The Federal Circuit agreed, saying the electronic sensing means limitation merely recites the functions of determining when pulses are delivered to fire the spark plugs and produce an electronic signal in response, “not the function of sensing the high voltage pulses sent from the ignition coil to the spark plugs. Contrary to the view of the district court, ‘determining’ when pulses are delivered to fire the spark plugs does not require direct detection of those pulses. Such a determination could be done indirectly, by detecting a low-voltage electronic signal from a sensor that determines, from the position of the cam shaft, when high-voltage pulses are to be delivered to the spark plugs.” The court rejected Harley-Davidson’s argument that the disclosure in the summary and objects section leads to a conclusion that the claimed function requires that the electronic sensing means analyze the firing pulses of the ignition system. “The summary and objects of the invention can fairly be read to refer to an electronic sensing means that determines the firing sequence of the spark plugs by detecting a low-voltage electronic signal from a sensor within the ignition system,” the court said. “Moreover, whatever force Harley-Davidson’s argument might have viewing the summary and objects of the invention sections of the specification in isolation, it cannot be squared with the specific passage that describes in detail the electronic sensing means. The specification must be read as a whole to determine the structure capable of performing the claimed function.” CROSS-APPEAL The Federal Circuit also rejected Harley-Davidson’s conditional cross-appeal of the district court’s construction of a “status sensing means” for measuring vacuum in the intake manifold. Harley-Davidson argued that the corresponding structure was not adequately disclosed because the written description identifies the structure only as a commercially available vacuum sensor. The court said the issue was whether the characterization would be understood by one skilled in the art as structure capable of performing the recited function, and that the only testimony Harley-Davidson cited was not clear and convincing that one skilled in the art would not understand the scope of the claim when read in light of the specification. Budde is represented by Robert M. Skolnik in West Long Branch, N.J. Harley-Davidson is represented by Michael E. Husmann of Michael Best & Friedrich in Milwaukee. �; Copyright 2001 Mealey Publications, Inc.

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