*1 not one that we but question, “perplexing Ante appeal.” this can decide in
need or on con- goes The court then
at 1361. is a that, freestanding pain even if
clude must a claim disability, such
compensable factual not a sufficient there is
fail when an in- pain derives from
showing that This standard injury. or
service disease I in Allen. higher bar than set
raises the this, sug- and the court
see no reason none.
gests to 38 C.F.R. points
Sanchez-Benitez also an unlist- 4.20, “[w]hen which states that per- it will be condition is encountered
ed closely related rate under a
missible to only not injury or
disease affected, the anatomical lo- but
functions closely are symptomatology
calization and Court should
analogous.” The Veterans for a determi- remanded to the board
have neck of whether Sanchez-Benitez’s
nation capacity and impaired earning his
pain condition analogous
whether there an disability. rate his
to use as baseline to claim for failure pain denial of the neck
Its or underlying malady specific prove was, therefore, not in accordance
condition law, rule, regulation. (now INCORPORATED, known
S3 Sonicblue, Inc.), Plaintiff-
Appellant, CORPORATION,
NVIDIA
Defendant-Appellee.
No. 00-1257. Appeals, States
United Court
Federal Circuit.
Aug. *2 Hasson,
Kirke M. Pillsbury Winthrop LLP, Francisco, CA, of San argued for plaintiff-appellant. himWith on the brief were Jakopin, Beatus, David A. Brian J. Danielson, and Mark Alto, J. of Palo CA. Lanier, Tharan G. Cooley Godward LLP, Alto, CA, of Palo argued for defen- dant-appellee. With him on the brief were Stephen Alto, CA, Neal C. of Palo Walker, Kent M. Diego, San CA. Of Moreland, Palo, counsel was E. Michele Alto, CA. NEWMAN, MICHEL,
Before GAJARSA, Judges. Circuit NEWMAN, Judge. PAULINE Circuit Incorporated, S3 now known as SONIC- blue, (herein “S3”), Inc. appeals grant summary judgment by the United States District Court for the Northern California,1 District holding claims 1-4 and 9-11 of S3’s United States Patent No. 5,581,279 ground invalid on the of claim indefiniteness. We conclude ground. are not invalid on this judgment is reversed and the case is re- proceedings. manded for further SONICblue, Corp., (N.D.Cal. Inc. nVIDIA 1999). Aug. C 98- No. 01938 SBA screen from computer on the presented BACKGROUND data, to 256 albeit limited only 8 bits integrated is an invention patented (the total num- depth at that combinations computer circuit for use look-up positions ber of addressable *3 technology of video The basic display. data). table for bit at the time display was known color filed; for a patent patent '279 was the '279 and 9 of Independent pro- a circuit which novel monolithic follow, emphases added to patent circuit, signal generator clock grammable as indefi- challenged of the claims portions circuit, combina- and a a controller VGA nite: memory/digital-to-ana- random-access
tion com- integrated A monolithic circuit single a integrated are on log converter prising: chip. clock circuit means for programmable many divided into computer A screen is memory signal a clock producing video rows, which contains a each of horizontal signal; and a video dot clock picture elements points called plurality coupled pro- a controller to said video pixel Each contains fluores- “pixels.” for clock circuit means re- grammable light emit when cent materials ceiving memory signal the video clock generated an beam charged by electron and for signal and the video dot clock images, display monitor. To colored a video data producing information red, materials green, and blue fluorescent stream; pixel, with each structured are associated means, memory random-access cou- beams direct- to be illuminated electron controller, video for receiv- pled to said controller. computer’s graphics ed stream ing the video information intensity of the electron By varying the producing display and a video informa- beams, produced. the desired color is stream; and tion data prevailing patent explains '279 means, digital-to-analog converter video format at the time standard random-access coupled to both said Graphics Array filing Video controller, memory and said video (VGA) standard, array an specifies selectively receiving either the video for pixels. vertical of 640 horizontal and 480 data stream or the video information standard, pix- In accordance with the VGA stream re- display information output by the video controller el data are converting ceived data and for the re- per pixel; this at a maximum of 8 bits analog signals. ceived data to video possible limits to 256 the number of output circuit com- integrated 9. A monolithic display. colors available for prising: oper- describes two modes of programmable respon- a clock circuit mode, In color” ation. the “direct signal to a reference clock and devi- sive directly from data are transmitted pixel generating memory and a video sor data digital-to-analog controller to a the video signal; a clock signal clock and video dot (DAC) “in- In the converter receiving a video controller the video mode, the data from dexed” the video dot memory signal clock an controller is used as address video producing a video signal clock memory a random infor- input which is access from data mation data stream received (RAM) array look-up as a table. structured RAM; from a video higher bit corresponds Each address memory a information, producing a random-access allowing, thus level instance, depth to be video data stream 18 or bit color information granted the video claims as response accompanied by are a controller; presumption validity compli said video based on data stream from with, alia, § ance inter 112 2. See Budde digital-to-analog converter convert- Davidson, Inc., Harley data to ing digital analog received (Fed.Cir. signals; and 2001). supplying one of said video selector data stream from the video The requirement the claims controller and said video “particularly point[ out distinctly ] infor- from random- mation data stream said per claim[ ]” invention is met when a memory digital-to-analog access to said experienced son the field of the inven *4 digital converter as said received data. tion would understand scope of the
subject
patented
matter
is
when the
DISCUSSION
claim
in conjunction
is read
with the rest
specification.
of the
“If the claims when
granted summary
The district court
in light
specification reasonably
read
of the
judgment
the claims are invalid for
apprise
those skilled
the art of the
¶2:
§
indefiniteness under 35 U.S.C.
112
invention, §
112 demands no more.”
¶
§ 112
The
shall con-
Laboratories,
Shandon,
Miles
Inc. v.
997
particu-
clude with one or more claims
870, 875, USPQ2d 1123,
F.2d
27
1126
larly pointing
distinctly claiming
out and
(Fed.Cir.1993);see also Union
Re
Pacific
subject
applicant
matter which the
Chesapeake
sources Co. v.
Energy Corp.,
regards as his invention.
684, 692, USPQ2d 1293,
236 F.3d
57
1297
Summary
“if
judgment
appropriate
is
(Fed.Cir.2001);
Vaccine,
North American
depositions,
pleadings,
answers to inter-
Co.,
Inc. v.
Cyanamid
American
file,
rogatories, and
on
together
admissions
1571, 1579,
1571,
1333,
USPQ2d
7 F.3d
28
affidavits,
any,
with the
if
show
there
(Fed.Cir.1993); Hybritech,
1339
Inc. v.
any
genuine
is no
issue as
material fact
Antibodies,
1367,
Monoclonal
802 F.2d
moving party
and that the
entitled to a
1385,
(Fed.Cir.1986).
USPQ 81,
231
94-95
judgment as a matter of law.” Fed.
For claim
containing
clauses
func
56(c).
reviewing
grant
R.Civ.P.
On
tional
limitations in “means for” terms
summary judgment,
appellate
tribunal
¶ 6,
§
pursuant to
112
the claimed function
applies the same criteria as did the district
supporting
specifi
and its
structure
court.
Anderson v. Liberty Lobby.
See
cation
presented
must be
with sufficient
Inc.,
242, 250, 255,
477 U.S.
106 S.Ct.
particularity
satisfy
requirements
(1986);
2. The district court refused to limit acknowledged arguing that the video con to a maximum of 8 bits of the VGAcontroller be to the "8 bit per pixel, agreeing S3 that "the '279 troller should limited VGA at that ... consistent with patent contemplates a VGAcontrol standard time use of Figure (only 2 bit out output.” Slip op. described in 8 with a 24-bit at 28-29. ler controller).” Indeed, Opposi nothing puts n VIDIA from VGA there is Construction, Appendix to S3 Claim Joint presented to the district court to tion the evidence required suggest selector/display is at A1750. that the
1369 n portion 23 DAC RAMDAC tion from the video controller need not through a selector 24.” Col. lines 1-5. pass through the' memory. random-access Comprehension the terse lan The district objected court guage the '279 claims is aided re claims are not they self-contained in that course to the rest of the specification, for explain do not that “video display informa- body specification explains produced tion is by the controller.” We illustrates “video information data stream” agree that the claims are not a self-con- and “video tained explanation every step. That is stream,” meaning such that their not the role of claims. would be understood a person experienced in the field of the invention. The purpose of claims is not to The claims are directed to invention explain works, the technology or how it specification; that is described they but to state legal boundaries of the meaning do not have removed from the patent grant. A claim is not “indefinite” they “context from which arose.” Net simply because it is hard to understand word, LLC v. Centraal Corp., F.3d when viewed without benefit of specifi (Fed. USPQ2d 1076, cation. Autogiro Co. Cir.2001); America Mfg. see also Co. v. Cf. Slimfold States, Indus., Inc., United Kinkead Ct.Cl. (Fed.Cir.1987) (“a USPQ 697, (Ct.C1.1967) (claims light are construed in speci claim cannot interpreted be without going fication, they part). of which are a itself’). beyond the claim As was ex plained in the specification, the video infor *6 argues
toVIDIA that the claims are am- mation data stream emitted biguous because two the control outputs different the video controller are required, and ler is either through look-up the that states this is inconsistent with (to the table in RAM produce the a video description specification. in the We con- stream) display or, information already clude, however, person that a of skill in information, consisting of video display the this field would understand the claims bypasses stream the RAM and proceeds when in light viewed in directly digital-to-analog converter. specification. the Claim 1 a recites “video explanation See col. lines 1-5. This controller ... producing a video informa- expert elaborated the witnesses. See tion data stream.” The next clause of Ferraro, Richard F. Expert Re Witness claim 1 states that the RAM receives the 4.4, (“Hav port Appendix at Joint at 1541 pro- “video information datá stream” and ing integrated the RAMDAC on the dis the duces information data play chip palette controller facilitated a stream”; specification the explains this red, in bypass green the event that the transformation, and the role of the bit- already provided blue data was from the pixels content of the in generating the controller.”); ... circuitry in the display. The final clause of claim 1 states ¶ Belgard Declaration of Richard A. at 117 that the “coupled DAC is to both said (“video display information that is memory random-access and to said video directly from the controller can VGA be controller,” and serves to “selectively re- read, bypass will therefore ceiv[e] either the video information data (re RAM”); patent, '279 col. lines 1-5 stream or the video produced supra). per data conclude that a stream.” This clause manifests the We specification’s teaching that the informa- son skilled this field would understand opera- of its electronic tor and details streams scope of data meaning and specification. in the are not described tion in the claims.3 as set forth is a that a selector presented evidence S3 of these ruling of indefiniteness whose component electronic standard terms is reversed. art, and known in this is well structure Selectively Receiv- ... for The “Means usually are components standard that such ing” in the in the manner shown represented “digital-to- a 1 includes Claim pat- of the '279 patent. '279 The inventor selectively ... converter means analog that expert witnesses testified ent and the data video information receiving either the readily in this field would persons of skill display information or the video stream as shown recognize that selector converting received [and] data stream device such as is an electronic specification district signals.” The analog video multiplexer, whose structure is simple a ... for selec that the “means court held court held that The district well known. indefinite tively receiving” was because for the “compensate can not such evidence ‘selectivity’ limi claimed “structure dis- expressly the '279 failure of specification is not disclosed tation of such close the structure devices.” § 112 by 35 6.”4 required U.S.C. as testimony found that this district court ... the “means which agree that factual foundation “on parties provided multiplex- receiving” corre- selectively may] limitation base its assertion [S3 ” art,’ found known but “selector” referred ers are ‘well sponds Figure inadequate as to overcome and shown evidence stating that dis- charge, How- integrated 24 of the circuit. indefiniteness element judged on the ever, the selec- closure must be basis structure of the electronic RAM; is, agree teachings parties both misperceives 3. The dissent stating produce can opinion in video specification and our controller directly by infor- bypassing the and sent the DAC and RAM which is read "unprocessed” the RAM an ad- to the DAC mation is sent to See, (" e.g., explained: at 1372 'vid- example, dissent VIDIA information. For n dress. *7 is sent to the eo ... way process digital information' data is send it to to "One (“the processing”); id.' at 1373 without color to directly from the video controller bypass that in mode [is] conclusion is sometimes to as This referred a[DAC].... trans- unprocessed bit video information is 8 expand possible to 'direct mode.’ It is color display”); directly to the id. at 1375 mitted possible available with a colors number bypasses the ("unprocessed 8 bit data RAM per pixel using given bits number display”). Despite directly and sent is 'look-up ... which functions as a[RAM] characterization, neither the dissent's (some- up RAMlooks table.’ The location opinion video specification nor our state that address) an ... corre- times to as referred unpro- bypassing the is RAM pixel video sponding to the data from the Supra at does our 1369-70. Nor cessed. arrangement This is controller.... sometimes ” "suggest[ opinion that the 8 bit video infor- ] at color mode.' Brief referred to 'indexed data, input into the RAM in the index mation 3. generate video dis- mode to 18/24-bit data, opin- play itself data.” As our is § in a for a 112 & 6. An element claim states, "the data ion from expressed or may be as a means combination address which is is used as an controller specified with- step performing a function (RAM) memory input to a random access structure, material, or acts the recital of out Supra array.” at 1366. thereof, claim be support and such shall corresponding struc- construed to cover the parties agree controller that the video Both ture, material, specifi- described in the or acts produce information which are can streams DAC, equivalents thereof. first to cation routed either
1371 experience” “common of “those outside the CONCLUSION art.” relevant The court found that judgment of invalidity of 1 claims “ experience’ suggest ‘common does not therefrom, 9 and the claims depending that the function described the ‘selectiv- indefiniteness, on the ground of is re- ity’ limitation refers to a ‘simple multiplex- versed. The case is remanded for further ” Thus, er.’ the court give any declined to proceedings. weight to the evidence of the understand- REVERSED AND REMANDED. ing persons of skill in the field. patent The law is clear that docu GAJARSA, Judge, Circuit dissenting. subject ments need not include matter that I respectfully dissent from the majority is known in the field of the invention and is opinion. It concludes that the district art, prior for patents are written for court erroneously held that claims 1-4 and persons experienced in the field of the 9-11 of the patent '279 are indefinite. Technologies, invention. See Vivid Inc. v. Contrary to majority, I would affirm Inc., Engineering, American Science and the district court’s 795, 804, determination. USPQ2d 1289, (Fed.Cir.1999) (“patents are written The majority finds that the claims are artisans”). and for skilled To hold other However, definite. an astute reading of require every patent wise would document clearly establishes that the term to include a technical treatise for the un “video information data stream” renders Although skilled reader. an accommoda their and meaning ambiguous. Ref- tion experience” “common lay erence to the intrinsic evidence fails to feasible, persons may be it an unneces rectify this and the majority’s ambiguity, sary burden for inventors and has long speculative analysis and illusive rejected been as a requirement contrary is insuf- disclosures. Atmel Corp., See 198 F.3d at ficient salvage the claims. (Fed.Cir.1999) at 1230 Where the bounds of the claims are (“The specification would be of enormous indeterminable, the claims are invalid un unnecessary if length one had to liter 112, 2, der 35 as indefinite. U.S.C. wheel.”); ally reinvent and describe the Communications, Personalized Media Assoc., Garlock, Inc., W.L. &Gore Inc. v. Comm’n, LLC v. International Trade USPQ F.2d (Fed. (Fed.Cir.1983) (“Patents USPQ2d 1880, are written to en Cir.1998). Thus, able a claim those skilled in the art to whether is invalid practice the invention, public.”). not the requires indefiniteness a determination of whether one skilled the art would be *8 The uncontradicted evidence was that a scope able to discern the of the claim selector is of well known electronic struc- light “when read in of the specification.” performs ture and a common electronic Orthokinetics, Safety Inc. v. Travel function, readily and is implemented from Chairs, Inc., 1565, 1576, 1 the specification. the There (Fed.Cir.1986). USPQ2d .1081, In 1088 contrary no evidence. It is not the v. Kimberly-Clark Corp., Solomon 216 112, compliance § criterion for with wheth- (Fed.Cir. 1372, F.3d lay person er a having no skill whatsoever 2000), explain purpose we the in this field of this statu would know how a selector is tory requirement, stating: constructed. the “As has been ruling invalidity Thus definiteness, comply failure to noted in the context of is incor- the rect, 2, and must be inquiry reversed. paragraph under section hand, DAC, the claims, on the other tion of the the as whether focuses on
now data stream” is descrip- “video information in view of the written term interpreted function of received tion, their describe data adequately perform used to [scope the] the of public the Because that data notifying the controller. from Id. at right to exclude.” patentee’s step transformation bypasses the 1372, USPQ2d at 1283. When F.3d RAM, process- no color the data receives that one ambiguous so the claims become display. Never- ing to its use prior deter- in the art cannot ordinary skill theless, unpro- refers to such the claim such scope speculation, mine their absent data as a “video information cessed data indefiniteness. See are invalid for however, DAC, functions stream.” The Steele, 49 C.C.P.A. In re color data to only digital convert (CCPA 862-63, USPQ perform does not analog form and 1962). Thus, any data received processing. that the court determined already The district in color format must be DAC is data stream” term “video information ready display. Because and be inde- inconsistently each of the within used function of the DAC is reciting clause claims, rendering them thereby pendent unpro- receipt recite of both written to 1 and 9 use agree. I Claims indefinite. information” and cessed “video information data “video the term information,” nec- which are “video output by represent stream” different, in that clause essarily reference meaning of processing. RAM after simply of the controller as output to the contrast, the term By term is clear. only confusing is not “video information” used to information data stream” is inaccurate. but also 1) signals: three different describe analysis fails to flawed 2) controller; the video output sole in the claims of the term address use RAM receives from the video data the to describe data sent “video information” it into a “video controller which transforms DAC, wherein data is sent directly to the display information data stream” processing. without color to the 3) DAC; the information sends the term is inconsistent with Such use of directly from the video the DAC receives informa- required conversion of “video Thus, language of the controller. prior the RAM to transmission tion” has three suggests claim the term Accordingly, ambiguity Therein lies the con- meanings. different the term “video informa- raised use of ordinary one of skill preventing fusion stream,” the sole of the tion data determining the art from controller, input to both the claimed invention. DAC, cannot be rectified RAM and the that the claims use beyond dispute It is reading plain on a simply based information data stream” the term “video language of the claims. requiring transfor- to describe both majority satisfied that the de- ready for dis- mation and to describe data resolves the scription noted, reciting play. As clause Nothing in the claims. ambiguity input function of the RAM describes *9 description supports use of written to the a “video information data stream” to data term information” to refer “video processing. processed, RAM for Once display, howev- directly transmitted to the a “video data is referred to as resultant er, display the term “video information” (empha- information data stream.” display added), ready data consistently func- used to describe reciting In the clause sis Indeed, display. specification display con- is articulated in the majority sistently Indeed, the term uses “video information” opinion. analysis, devoid of to describe the sent to the RAM for majority opinion washes its hands of this prior display. transformation Column issue on the basis “that a person of skill in 1, 65, 2, 6; through line column line col- this field would understand the claims 2, 32-41; 3, 12-14; umn lines column lines when viewed in light of the description in 4, 23-26; 6, column column lines lines 1-8. specification.” There is no suggestion description Clearly, does nothing to that a “video information data can stream” rectify the generated by confusion the am- display include “video In- information.” biguous language. claim The text of the stead, description states that the “vid- written description is in conflict with the eo input information stream” to the RAM claims and even with the illustration of the display is converted into a “video informa- in Figure invention shown In only 2, 1-6, 37-41; tion stream.” Column lines portion of the specification discussing a 1-5, 20-23; 6, column lines column lines mode, “bypass” in which data is sent di- Thus, 9-10. description the written sug- rectly from the video controller to the that a gests “video information stream” is DAC, states: “In certain modes composed unprocessed “video informa- of operation may it be desirable for the tion,” display while a “video VGA controller 11 to bypass the RAM composed ready stream” is of data for portion of the RAMDAC 23 and instead display, namely display “video informa- provide display information directly tion.” portion the DAC of the RAMDAC 23.” majority Figure notes that 2 depicts added). Column lines (emphasis 1-5 the transmission of bit8 information from Thus, mode, bypass the controller to both the RAM and direct- by the controller and sent directly to the (and ly to the display). selector then the comprised DAC is display “video infor- It acknowledges further that the RAM patent’s mation.” The information, produces color 18/24-bit explains also that “video information” is “bypass” that display mode “video produce used to “a video information information” is sent display. stream” that is sent to the RAM. Using majority’s “by- conclusion that RAM, information stored in the the “video pass” mode 8 bit data is transmitted di- information” is translated into “video dis- rectly to the selector/display, while consis- play information.” Column lines 1-5. tent with Figure is in direct conflict with Thus, even in the description of the inven- the written description’s requirement tion pertaining to the operation of the the selector/display receive “vid- 18/24-bit system in Figure illustrated the inven- eo display information.” tors used the term “video information stream” to describe majority fails .to the data must be explain this incon- reiterate, processed for sistency. To and the term “video con- clusion that in information” as the data bypass already mode 8 bit un- processed processed ready the RAM and video information is for dis- transmitted play. directly to the Such display is inconsistent with statements are inconsistent the written description’s requirement by- the claims’ reference to the data information,” passing receive color the RAM as “dis- 18/24-bit play” information in that expla- mode. No and reference to that same data as data nation of how the bit video information is is also by the RAM for converted into 18/24-bit
1374 this Somehow, majority through sees the specification contains the
Accordingly, that conclude the Indeed, than confusion magnificent rather to conflict. internal an reasonably apprise the written sufficient to ambiguity, evidence is claim resolving the in a art of the disputed language ordinary the of skill uses those description con- the contradicting the invention. manner of bypasses information” that “video clusion clarify testimony, while useful to Expert the to and is transmitted RAM the explain technology and to its patented the ambigu- description is the written Because errors or may not erase meaning, correct language the ous, with if not inconsistent diverge be used to or otherwise limitations upon relied claims, hardly be it can the of the invention. description from the confusing description resolve to Aerators, Inc. v. Systems, Aqua-Aerobic Thus, the claims. found in invention USPQ2d Inc., 54 F.3d 211 are that the claims majority’s conclusion (Fed.Cir.2000) 1566, 1568 (citing Markman discloses because definite Inc., Instruments, 52 F.3d v. Westview output to data” is “information 8-bit (Fed.Cir. 1321, 981, 967, USPQ2d in fact bypass mode is display banc), 1995) (en aff'd, 517 U.S. description. the written inconsistent USPQ2d 134 L.Ed.2d S.Ct. noted, demon- description As (1996)). on expert’s opinion An types two strates issue, including those legal under ultimate and the information” “Video different. are supported by must be 35 U.S.C. stream” a “video information contents conclusory than state something more of data the contents to data and refer Buchner, In re ment. by the must be streams (Fed.Cir.1991). data. On display, to 8-bit prior RAM in the record evidence There must be hand, information” display “video other testimony; the mere con- support the here display infor- of a “video the contents experts clusory statements made ready correspond to stream” mation correctly by the district were dismissed form, analog converted to display once court. Thus, majority color data. 18/24-bit person that “a majority believes incorrectly cites to the written understand the in this field would skilled claims are definite. suggest scope of the data streams as meaning and light of the written when read Even However, it fails in the claims.” set forth be- are indefinite description, its own conclu the fact that ordinary to reconcile apprise fail to one of they cause bypas bit data unprocessed 8 scope. art their Personal- sion—that skill 705, USPQ2d Media, at RAM and is sent ses the ized with the evidence inconsistent display at 1888. —is expert S3’s ac Specifically, S3. offered by the performed Finally, the selection proper that the “cannot knowledges DAC cre- way in no clarifies confusion DAC has not ly read video information ambiguous references ated into informa been translated video Indeed, information data stream.” attempts Although majority tion.” considered, rejected, court but district by suggesting, without this issue confuse support offered extrinsic evidence S3’s record, that the 8 in the intrinsic support ordinary one of skill argument that itsof data, input into the bit video find the claims the art would definite. generate mode to bit the index RAM in testimony of l% found the district court data, itself evidentiary support. lacking expert S3’s *11 data, expert’s testimony S3’s contra majority own in the course of appeal.1 this Ig majority’s unsupported fact, dicts the noring factual this the majority proceed has finding arrived at independently by the ed to reach its own conclusion regarding majority incorrectly 1. The states that this dis it so unclear “that there is no means which specification sent scope mischaracterizes the and the may of the claim be ascertained used,” majority's opinion, arguing language the from the that neither specifi resort to the specification required. cation opinion the the is nor “state that Johnson Worldwide As socs., Inc. v. Zebco Corp., video information 175 F.3d bypassing the RAM is un USPQ2d 1607, (Fed.Cir.1999). processed.” majority With further states that regard to definiteness of opinion claims written in suggest “our [does not] that the 8- [ ] format, means-plus-function data, question “the input bit video information into the the case before us is not whether there has generate RAM in the index mode to 18/24-bit compliance been aspect data, some display display color video is itself ¶ 1, whether, utilizing but authority the Indeed, data.” the sug does not ¶6 §112 means-plus-function to claim in gest that the 8-bit data sent from the VGA form, the drafter adequately has described noted, displayable. controller is As the writ structure, material, or satisfy acts which the description provides ten that the 8-bit video claiming requirement § 112 2.” In re data must be converted into bit video ,8/Í4 Dossel, 115 F.3d display prior display. As the (Fed.Cir. 1997). The dissent maintains majority correctly recognizes, the data con that because technically the claims are incor verted displayable the RAM is in fact not rect, description and the written nothing adds processed. majority opinion until fails to claims, clarify the ambiguity found in the data, explain how the 8-bit video information are claims indefinite. input processing into the RAM color in the Indeed, majority appears to have con- generate index mode to color video 18/24-bit fused definiteness with indefiniteness. The data, display displayed by can also be majority suggestion makes the outlandish mode, bypass DAC given that both even if the patented claims recite the inven- originate streams of data from the same incorrect, tion technically in a manner that is VGA, output by stream of data and are case, as in this are claims definite. As thus majority's analysis identical. The of the noted, only if the description clarifies invention, claimed Figure as illustrated in 2 of ambiguity suggestion in the claim is that incorporated majority into the compensate correct. To for the fact that the opinion, requires that the “video data stream” incorrect, technically are and the fact input is 8-bit data to the RAM for conversion that the written contains conflict- data, into display and that same 18/24-bit ing regarding operation evidence of the directly stream of data output 8-bit also is invention, claimed based on evidence not be- DAC,bypassing the RAMfor with majority fore this court the substitutes its own processing. out further majority While the theory regarding operation of the claimed attempts analysis to distance its from the fact invention for the district court's factual find- that the accept unprocessed DAC cannot data ings, unsupported to reach the conclusion data, and the RAM cannot receive person that “a skilled this field would un- because the same must data be transmitted to meaning scope derstand the both the RAM simultaneously, DAC claims,” streams as set forth in the even majority's analysis requires that both the patentee's expert’s where testimony is in unprocessed RAM and the DAC receive 8-bit findings majority. conflict with the data, or both receive 8-bit data. absolutely There support is no in the record majority argues that the dissent “con unprocessed data received indefiniteness fuse[s] with nonenablement.” RAMand converted data is simul- into suggests misunderstanding That of the dis taneously directly transmitted to the DAC for sent. Whether a claim is invalid for indefi support to the there Nor requires niteness determination whether the intrinsic evidence find- one skilled in the art would be able to discern ing that the VGA controller transmits 8-bit light of the claim “when read in selector/display by- Orthokinetics, specification.” Instead, Inc. v. pass majority mode. rely must Safe Chairs, Inc., ty Travel upon attorney argument appears to have USPQ2d 1081, (Fed.Cir.1986). Further been support taken out of context more, language finding. where the of a claim renders *12 Cir.1999). temptation the must resist We claimed invention the of operation the patent the the disclosure of supplement to of understanding flawed upon its based theory of how our own thereby adopt the of beyond even that technology the function. The system might the claimed of the as evidence expert testimony of S3’s claims in to the majority is unable rewrite ordinary skill of one of understanding the cannot because invention this case alchemy. is dialectic the art. This nothing in as claimed because function testimony gaps of- remaining description fills the written Because the An sufficiently to resolve the confusion. the of explain operation the by fered S3 to weigh not evidence court should appellate conclusory, that merely is system claimed inconsis- to make its own and undertake clarity of the claims the testimony as to the intrinsic rec- findings factual from tent in this case. outcome dictate the not should reach a desired result. ord to testimony, offered opinion expert’s The re- properly support, without factual spec- that the majority further finds The court.2 Acknowl- by district jected the the structure adequately discloses ification properly “cannot that the DAC edging the in accordance with of the “selector” ¶ information,” expert fails § 6. The S3’s 35 U.S.C. requirements read video of precedent sug- analysis of our discrepancy between explain to specif- not be gests the structure need that of the description claim’s ically in the written identified RAM, and the use of bypasses that requirements satisfy to the definiteness processing the RAM same with claims written accordance Therefore, expert S3’s prior to majority Again, § 6. U.S.C. clarify how one stream testimony fails issue, of the and reverses washes its hands both can sent of data be court’s factual determination the district simultaneously to the is sent DAC and also inadequately de- RAM for translation. the “se- required scribes the structure pre- required to the extent lector” claims to may ambiguous We construe majority The instead cedent of this court. if validity, possible. ACS their preserve known “a well [a] finds that ‘selector’ Hosp., 732 v. Hosp. Sys., Inc. Montefiore a com- performs electronic structure (Fed. USPQ im- readily function and is mon electronic Cir.1984). however, not, rewrite mayWe description in the from the plemented ordinary apprise one claims that fail specification.” inven in the art of skill Casio, Inc., v. 183 F.3d for and though patents Rhine are written tion. See Even artisans, (Fed. avoid should USPQ2d by skilled court (Fed.Cir.1997), explained that in the court district majority concludes give any weight to the that even an court "declined the evidence was that case such understanding of persons evidence person, "those the relevant outside unskilled art,” part on the basis skill art,” that the structure have concluded would from the disclosure district court reviewed function was corresponding claimed rele- perspective those outside of the “of description. sufficiently recited in contrary, court the district vant art.” To majority's the district conclusion expert, testimony of S3's considered the "lay person” standard for applied a court inventor, finding it conclu- well as that of determining compliance 112 is mis- Furthermore, rejecting on sory. S3's reliance analysis. reading of the district court's Dossel, In re temptation to find structure CORPORATION, where none has been identified MORELAND Appellant, patentee. Claims written in means-plus- function format for which no structure has gives been identified rise to Anthony PRINCIPI, Secretaiy *13 J. technically are not to provide sufficient Affairs, Appellee. Veterans notice to a appropriate person ordinary art identity skill of the exact No. 00-1523. therefore, required, structure United Appeals, States Court of claim, scope of the context of Federal Circuit. ¶ 112, § 6 claim. The test for definiteness in such instances is whether “structure Aug. 2001. supporting means-plus-function claim un- ¶ § [appears] specifica-
der
tion,” Corp. Storage Atmel v. Information
Devices, Inc., (Fed.Cir.1999) (em-
USPQ2d added),
phasis simply knowledge not ordinary one of skill the art. This
requirement means-plus- is the tradeoff of claiming, enabling patentees
function
claim a list of structures identified in the
patent’s description using general, terminology,
functional without the burden listing those structures within the text 1381-82,
of the claim itself. 198 F.3d at
USPQ2d at 1230. Where the structure for
performing claimed function is neither properly
stated or incorporated by refer- “[fjullfillment
ence within the description, 6 tradeoff cannot be satis-
fied.” 198 F.3d at at case,
In this means-plus-function
limitation of claim 9 does not meet this
requirement. I Accordingly, dissent from finding on this issue as well.