Case: 19-1888    Document: 43    Page: 1   Filed: 05/06/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                DIONEX SOFTRON GMBH,
                       Appellant

                            v.

          AGILENT TECHNOLOGIES, INC.,
                      Appellee
               ______________________

                        2019-1888
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 106,073.
                   ______________________

                   Decided: May 6, 2020
                  ______________________

     ANDREW JAMES ISBESTER, Kilpatrick Townsend &
 Stockton LLP, San Francisco, CA, for appellant. Also rep-
 resented by JORDAN TRENT JONES, Menlo Park, CA.

    JOHN B. SGANGA, JR., Knobbe, Martens, Olson & Bear,
 LLP, Irvine, CA, for appellee. Also represented by EDWARD
 M. CANNON, DAVID GERARD JANKOWSKI, PHILIP MARK
 NELSON.
                  ______________________

  Before LOURIE, WALLACH, and HUGHES, Circuit Judges.
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 2       DIONEX SOFTRON GMBH   v. AGILENT TECHNOLOGIES, INC.



 LOURIE, Circuit Judge.
      Dionex Softron GmbH (“Dionex”) appeals from a deci-
 sion of the Patent Trial and Appeal Board (“Board”) deter-
 mining that claims 21–39 of U.S. Patent Application
 14/454,577 (the “’577 application”) are unpatentable for
 lack of written description and indefiniteness under 35
 U.S.C. § 112 and that Dionex therefore lacks standing to
 continue an interference between the ’577 application and
 U.S. Patent 9,435,773 (the “’773 patent”). See Agilent
 Techs., Inc. v. Dionex Softron GmbH, Interference No.
 106,073, 2019 WL 1453983 (PTAB March 29, 2019) (“Deci-
 sion”). Because we conclude that the Board did not err in
 its construction of the claims under 35 U.S.C. § 112(f) and
 agree that the ’577 application lacks sufficient disclosure
 under the Board’s construction, we affirm.
                        BACKGROUND
     Agilent Technologies, Inc. (“Agilent”) owns the ’773 pa-
 tent, which is directed to a sample injector for use in high
 performance liquid chromatography. ’773 patent, Ab-
 stract. The sample injector includes a metering device for
 introducing a fluidic sample into a sample loop, a switcha-
 ble valve capable of switching positions to selectively con-
 nect or disconnect various conduits connected to the valve,
 and a control unit for controlling switching of the valve to
 transfer the sample loop between a low-pressure state and
 a high-pressure state via an intermediate state to equili-
 brate a pressure difference in the sample loop between the
 low-pressure and the high-pressure state. Id. col. 3 ll. 17–
 38.
     In 2014, Dionex filed the ’577 application, which is also
 directed to sample injectors for use in high performance liq-
 uid chromatography. Dionex copied claims 1–19 of the ’773
 patent into its ’577 application as claims 21–39 to provoke
 an interference. The copied claims include two independ-
 ent claims. Claim 21, an apparatus claim, recites in part
 “a control unit configured for controlling the valve switch
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 DIONEX SOFTRON GMBH   v. AGILENT TECHNOLOGIES, INC.        3



 among a first position, a second position and an intermedi-
 ate position in order transfer the sample loop between a
 low pressure corresponding to the first position of the valve
 and a high pressure corresponding to the second position of
 the valve.” Claim 39 recites similar subject matter as a
 method claim, including “controlling the valve to switch
 among predetermined valve positions to transfer the sam-
 ple loop between a low pressure and a high pressure.”
      The Board declared an interference and Agilent filed a
 motion for judgment that the claims are indefinite and lack
 written description support in the ’577 application. Specif-
 ically, Agilent argued that the “control unit” limitation of
 claim 21 and the “controlling” limitation of claim 39 should
 be construed as functional limitations under 35 U.S.C.
 § 112(f) and that, when so construed, the ’577 application
 fails to disclose adequate structure, rendering the claims
 indefinite.
     The Board agreed with Agilent and entered judgment
 against Dionex. First, the Board determined that the “con-
 trol unit” limitation of claim 21 and the “controlling” limi-
 tation of claim 39 are functional limitations subject to
 § 112(f). Decision, 2019 WL 1453983, at *9. Based on the
 testimony of Agilent’s expert, Dr. Schug, the Board deter-
 mined that the limitations would not convey any corre-
 sponding structure or acts to a person of ordinary skill, and
 therefore recite only functions. Id. at *7. Observing that
 “when a party challenges written description support for
 an interference count or the copied claim in an interfer-
 ence, the originating disclosure provides the meaning of
 the pertinent claim language,” Agilent Techs., Inc. v. Affy-
 metrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), the
 Board proceeded to identify corresponding structure for the
 claim terms in light of the written description of Agilent’s
 ’773 patent. Having determined that both the “control
 unit” and “controlling” limitations are subject to § 112(f),
 the Board construed the terms together and determined
 that the limitations require physical movement of the valve
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 4       DIONEX SOFTRON GMBH    v. AGILENT TECHNOLOGIES, INC.



 and that the written description of the ’773 patent discloses
 the corresponding structure for that function as a gearbox,
 motor controller, encoder, and central processing unit. De-
 cision at *9; ’773 patent col. 8 ll. 61–67. Finally, the Board
 determined that Dionex’s ’577 application lacks disclosure
 of the corresponding structure disclosed in the ’773 patent.
 Id. at 12. Accordingly, the Board held that the copied
 claims are indefinite as to the ’577 application and entered
 judgment against Dionex. Id. at 13.
     Dionex appealed. We have jurisdiction under 28 U.S.C.
 § 1295(a)(4)(A).
                         DISCUSSION
     “Claim construction is a question of law that may in-
 volve underlying factual questions.” Amgen Inc. v. Amneal
 Pharm. LLC, 945 F.3d 1368, 1375 (Fed. Cir. 2020) (citing
 Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332
 (2015)). “Whether claim language invokes [§ 112(f)] is a
 legal question of claim construction that we review de
 novo.” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed.
 Cir. 2019) (citing Williamson v Citrix Online LLC, 792 F.3d
 1339, 1346 (Fed. Cir. 2015)). “We review the Board’s fac-
 tual findings underlying this inquiry for substantial evi-
 dence.” Id. (citing EnOcean GmbH v. Face Intern. Corp.,
 742 F.3d 955, 959 (Fed. Cir. 2014)).
     “Indefiniteness is a question of law that we review de
 novo, subject to a determination of underlying facts, which
 we review for substantial evidence.” Guangdong Alison Hi-
 Tech Co v. ITC, 936 F.3d 1353, 1359 (Fed. Cir. 2019) (citing
 One-E-Way, Inc. v. ITC, 859 F.3d 1059, 1062 (Fed. Cir.
 2017)). “When no structure in the specification is linked to
 the function in a means-plus-function claim element, that
 claim is indefinite.” Bosch Auto. Serv. Sols., LLC v. Matal,
 878 F.3d 1027, (Fed. Cir. 2017) (citing AllVoice Computing
 PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed.
 Cir. 2007)).
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 DIONEX SOFTRON GMBH   v. AGILENT TECHNOLOGIES, INC.        5



      On appeal, Dionex does not dispute that the “control
 unit” limitation of claim 21 recites functional language.
 Rather, it argues that the corresponding structure is a gen-
 eral-purpose computing device and does not require a gear-
 box, motor controller, and encoder as determined by the
 Board. Under such a construction, Dionex argues, the ’577
 application discloses sufficient structure. As for claim 39,
 Dionex argues that the “controlling” term is not a func-
 tional limitation because the claim recites sufficiently spe-
 cific acts for performing the function of controlling the
 valve.
     Agilent responds that the Board properly construed the
 disputed claim terms as functional limitations that require
 movement of the valve and that the ’577 application does
 not disclose any structure for effecting that function.
     We agree with Agilent. As recognized by the Board, the
 disputed claim terms require switching the valve between
 different positions, which necessarily requires movement
 of the valve. Accordingly, the Board identified the corre-
 sponding structure in the ’773 application as that which ef-
 fects the movement of the valve—namely the gearbox,
 motor controller, encoder, and central processing unit.
 Based on its construction, the Board determined that the
 ’577 application fails to disclose such a corresponding
 structure. In reaching its conclusion, the Board relied on
 the testimony of Dr. Schug that the ’577 application does
 not contain any disclosure of structures, materials, or acts
 capable of controlling the valve to switch among the differ-
 ent positions as well as the disclosure of the ’577 applica-
 tion itself that the controllable drive of the valve is “not
 shown.” We discern no error in the Board’s analysis and
 therefore agree that the involved apparatus claims are in-
 definite as to the ’577 application.
     As for claim 39, we agree with Agilent and the Board
 that the “controlling” limitation is a functional claim term
 subject to the same construction as claim 21. Based on Dr.
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 6       DIONEX SOFTRON GMBH   v. AGILENT TECHNOLOGIES, INC.



 Schug’s testimony that the claim term would not connote
 acts to a person of skill sufficient to perform the recited
 function, the Board determined that claim 39 does not re-
 cite acts sufficient to perform the recited function, and we
 agree. Accordingly, for similar reasons as discussed above
 with respect to claim 21, we agree that the ’577 application
 fails to disclose sufficient structure for performing the re-
 cited function, rendering claim 39 indefinite.
                        CONCLUSION
      Because the claims are indefinite and hence unpatent-
 able, Dionex lacks standing to continue the interference.
 We have considered Dionex’s remaining arguments but
 find them unpersuasive. For the foregoing reasons, the de-
 cision of the Board is affirmed.
                        AFFIRMED
