Case: 19-1100   Document: 44     Page: 1    Filed: 01/30/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

    INTELLIGENT AUTOMATION DESIGN, LLC,
              Plaintiff-Appellant

                            v.

 ZIMMER BIOMET CMF AND THORACIC, LLC, DBA
          BIOMET MICROFIXATION,
               Defendant-Appellee
             ______________________

                       2019-1100
                 ______________________

    Appeal from the United States District Court for the
 Middle District of Florida in No. 3:16-cv-01044-BJD-MCR,
 Judge Brian J. Davis.
                  ______________________

                Decided: January 30, 2020
                 ______________________

     JOHN DAVIS HOLMAN, Matthews, Lawson, McCutcheon
 & Joseph, PLLC, Houston, TX, argued for plaintiff-appel-
 lant.

    KEVIN P. WAGNER, Faegre Baker Daniels LLP, Minne-
 apolis, MN, argued for defendant-appellee. Also repre-
 sented by LAUREN MARIE WILLIAMS STEINHAEUSER; DANIEL
 M. LECHLEITER, Indianapolis, IN.
                 ______________________
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 2       INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                               AND THORACIC




 Before PROST, Chief Judge, WALLACH and HUGHES, Circuit
                         Judges.
 HUGHES, Circuit Judge.
      This is a patent case about controlling a motor used to
 drive a screwdriver bit. Intelligent Automation Design,
 LLC sued Zimmer Biomet CMF and Thoracic, LLC for in-
 fringement of all claims of U.S. Patent No. 7,091,683. The
 district court found that independent claims 1 and 6 were
 invalid as indefinite for failing to meet the requirements of
 35 U.S.C. § 112 ¶ 6. 1 We agree with the district court that
 § 112 ¶ 6 applies because both claims include means-plus-
 function terms. But because we conclude that the ’683 pa-
 tent’s specification discloses sufficient structure to define
 the bounds of the means-plus-function terms, we reverse
 the district court’s finding of indefiniteness and remand for
 further proceedings.
                               I
      The ’683 patent teaches both a method and a system
 for controlling a motor used to turn a screwdriver bit.
     Claim 1, the independent method claim, recites:
         A method of controlling a motor (106) used to
     drive a screwdriver bit (105) such that screws
     (107) are seated to the optimum point of grip



     1    The America Invents Act (AIA) re-designated
 § 112 ¶ 6 as § 112(f). Leahy-Smith America Invents Act,
 Pub. L. No. 112-29, sec. 4, 125 Stat. 284, 296 (2011). But
 the amended version of § 112 applies only to patent appli-
 cations “filed on or after” September 16, 2012. See AIA
 § 4(e), 125 Stat. at 297. Because the ’683 patent was filed
 before this date, we refer to the pre-AIA statute. See J.A.
 24.
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 INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF         3
 AND THORACIC


     between the screw (107) and the work piece mate-
     rial, the method comprising:
             (a) detecting a torque of the motor;
              (b) determining a time when the torque
         reaches a maximum by an average means
         for determining an average value as a func-
         tion of a current value and a new value,
         thereby determining the optimum point of
         grip; and
             (c) stopping the motor at the optimum
         point of grip.
 ’683 patent col. 4 ll.11–20 (emphasis removed).
     Claim 6, the independent system claim, recites:
              A speed/torque controller (100) for con-
         trolling the rotation speed and output
         torque of the motor (106) with either sensor
         feedback or back EMF used to monitor mo-
         tor (106) speed and current used to monitor
         motor (106) torque, the controller compris-
         ing:
             a detector for detecting the output
         torque of the motor; and
             a control circuit for determining a time
         when the torque reaches a maximum by an
         average means for determining an average
         value as a function of a current value and a
         new value, thereby determining the opti-
         mum point of grip, and stopping the motor
         at the optimum point of grip.
 Id. col. 4 ll. 33–44 (emphasis removed).
    The parties’ dispute centers on two issues: first,
 whether “determining a time when the torque reaches a
 maximum” in claim 6 should be construed as a “means-
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 4     INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                             AND THORACIC


 plus-function” element subject to § 112 ¶ 6 and second, if
 the specification describes structure that adequately de-
 fines this function and thus, the invention. IAD appeals
 from the district court’s entry of judgment holding inde-
 pendent claims 1 and 6 of the ’683 patent invalid as indefi-
 nite. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
                               II
      We review de novo the district court’s ultimate inter-
 pretation of a patent’s claims, including “means-plus-func-
 tion” constructions in which the claim language invokes
 § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
 1346, 1347 (Fed. Cir. 2015). We also review de novo a dis-
 trict court’s conclusion finding a claim indefinite under
 § 112 ¶ 2. Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP,
 838 F.3d 1224, 1228 (Fed. Cir. 2016). Biomet must prove
 any factual determination “critical to a holding on indefi-
 niteness” by clear and convincing evidence. Id. For both
 claim construction and indefiniteness, we review de novo
 any underlying factual determinations based on evidence
 intrinsic to the patent, but review for clear error any un-
 derlying factual determinations based on extrinsic evi-
 dence. Williamson, 792 F.3d at 1346; Cox Commc’ns, Inc.,
 838 F.3d at 1228. “To trigger clear error review, ‘it is not
 enough that the district court may have heard extrinsic ev-
 idence during a claim construction proceeding—rather, the
 district court must have actually made a factual find-
 ing . . . .’” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d
 1370, 1376 (Fed. Cir. 2017) (quoting Cardsoft, LLC v. Ver-
 iFone, Inc., 807 F.3d 1346, 1350 (Fed. Cir. 2015)). “If indef-
 initeness can be determined based solely on intrinsic
 evidence, our review is de novo.” Cox Commc’ns, Inc., 838
 F.3d at 1228. (citing Teva Pharms. USA, Inc. v. Sandoz,
 Inc., 574 U.S. 831, 841 (2015) (holding the same for claim
 construction)).
     “An element in a claim for a combination may be ex-
 pressed as a means . . . for performing a specified function”
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 AND THORACIC


 but “such claim shall be construed to cover the correspond-
 ing structure” described in the specification. 35 U.S.C.
 § 112 ¶ 6 (2000). “[T]he use of the word ‘means’ in a claim
 element creates a rebuttable presumption that § 112 [¶] 6
 applies[,]” but “the presence or absence of the word
 ‘means’” may yield to the “essential inquiry” of whether an
 ordinarily skilled artisan would understand the recited
 claim element “to have a sufficiently definite meaning as
 the name for structure.” Williamson, 792 F.3d at 1348. In
 construing a means-plus-function element, the court iden-
 tifies the claimed function, then determines “what struc-
 ture, if any, disclosed in the specification corresponds to the
 claimed function.” Id. at 1351. “Under 35 U.S.C. § 112 ¶ 2
 and ¶ 6 . . . a means-plus-function clause is indefinite if a
 person of ordinary skill in the art would be unable to rec-
 ognize the structure in the specification and associate it
 with the corresponding function in the claim.” Noah Sys.,
 Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
                               III
                               A
      We agree with the district court that § 112 ¶ 6 applies
 to claims 1 and 6. IAD does not contest the district court’s
 means-plus-function interpretation of claim 1. Since
 claim 1 recites the identical means-plus-function phrase as
 claim 6, including the “determining a time when torque
 reaches a maximum” function, that function should have
 the same meaning in claim 6. 2 A “strong” principle of claim
 construction dictates that the same phrase in different



     2 Nor did IAD ask the district court to construe this
 phrase differently between claims 1 and 6. See J.A. 391–
 94; J.A. 16–17. The district court considered whether the
 “control circuit” in claim 6 described sufficient structure for
 the disputed function, just as IAD requested. J.A. 18; J.A.
 392–94.
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 6     INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                             AND THORACIC


 claims of the same patent should have the same meaning
 unless “it is clear that the same phrase has different mean-
 ings in different claims.” In re Varma, 816 F.3d 1352, 1363
 (Fed. Cir. 2016). The recitation of a “control circuit for”
 performing the determining function in claim 6 provides
 detail about how the system achieves the function. But the
 recited “control circuit” does not change the meaning of “de-
 termining a time when torque reaches a maximum,” nor
 does it provide enough description of the structure to ren-
 der the limitation structural, rather than functional. See
 Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
 Inc., 711 F.3d 1348, 1364–65 (Fed. Cir. 2013) (explaining
 how “not just any adjectival qualification or functional lan-
 guage” modifying a recited circuit will render a “circuit”
 limitation structural, and providing examples of some ad-
 jectival qualifications that would do so). We thus affirm
 the district court’s application of § 112 ¶ 6 to “determining
 a time when torque reaches a maximum.”
     We next construe the claimed function. We agree with
 IAD’s interpretation. Despite arguing for a holistic claim
 interpretation, Biomet parses the claimed “determining a
 time” function too rigidly. Biomet’s interpretation of the
 function to mean determining when the torque is “arriving”
 at the maximum, see Appellee’s Br. 52, has a major flaw:
 both parties agree that function would be impossible to
 practice. Id. at 49–50; Appellant’s Reply Br. 16–17. “[A]
 construction that renders the claimed invention inoperable
 should be viewed with extreme skepticism.” AIA Eng’g
 Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed. Cir.
 2011).
     An ordinarily skilled artisan could plausibly under-
 stand the claimed function to mean retrospectively observ-
 ing changes in torque to ascertain when the torque has
 reached the maximum, the tense of “reaches” notwith-
 standing. Both the commonsense mathematics perspective
 that one cannot conclusively determine whether the torque
 reaches a maximum until one is able to calculate the slope
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 INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF         7
 AND THORACIC


 that follows the putative maximum, e.g., Appellee’s Br. 8,
 and the operability of the invention support this interpre-
 tation. The intrinsic record, if not entirely consistent,
 yields stronger inferences in favor of this interpretation
 than against it. See, e.g., J.A. 455 (“[The claimed method]
 stops the motor at the optimum point of grip between the
 screw and the material. It does [s]o by detecting a negative
 rate of change in torque that occurs right after the peak
 torque level is achieved at the maximum point of grip.” (em-
 phasis added)); see also infra n.3.
     Because we understand Biomet to contest the suffi-
 ciency of the disclosed structure rather than the adequacy
 of the link between that structure and the claimed func-
 tion, see Appellee’s Br. 54, we need not address the link be-
 tween this claimed function and the structure in the
 specification.
                              B
     We next address whether claims 1 and 6 are indefinite.
 “[F]or a claim element recited in means-plus-function for-
 mat, ‘the specification must contain sufficient descriptive
 text by which a person of skill in the field of the invention
 would know and understand what structure corresponds to
 the means limitation.’” Bosch Auto. Serv. Sols., LLC v.
 Matal, 878 F.3d 1027, 1039 (Fed. Cir. 2017) (quoting Ty-
 phoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
 1383–84 (Fed. Cir. 2011)). When describing microproces-
 sor-implemented functions, the specification must “disclose
 an algorithm for performing the claimed function” on the
 microprocessor “in any understandable terms including as
 a mathematical formula, in prose, or as a flow chart, or in
 any other manner that provides sufficient structure.”
 Noah Sys., 675 F.3d at 1312 (quoting Net MoneyIN, Inc. v.
 VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) and
 Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
 (Fed. Cir. 2008)). Even so, “[t]his court does not impose a
 lofty standard in its indefiniteness cases.” In re Aoyama,
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 8       INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                               AND THORACIC


 656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Finisar,
 523 F.3d at 1341). Rather, the specification need only dis-
 close enough to “permit one of ordinary skill in the art
 to . . . perceive the bounds of the invention.” Id. (quoting
 Finisar, 523 F.3d at 1340–41).
      Here, the specification teaches “a series of instructions
 for the computer to follow,” Typhoon Touch, 659 F.3d at
 1384, that reasonably bounds how the claimed invention
 might “determin[e] a time when torque reaches a maxi-
 mum . . . thereby determining the optimum point of grip.”
 The microprocessor receives the already-filtered analog
 current signal representing torque and smooths it using an
 averaging formula. See ’683 patent col. 3 ll. 9–26. The mi-
 croprocessor measures and monitors the value of the signal
 after it receives and smooths it. See id. Then, if the micro-
 processor detects a decrease in current, signifying that the
 torque has begun dropping and therefore that the screw
 has reached the optimum point of grip, it signals the con-
 troller to stop the motor. Id. at col. 3 ll. 26–28. Understood
 as a whole, this written description provides a coherent se-
 ries of steps defining how to perform the corresponding
 claimed steps: detecting the motor torque, smoothing that
 torque using an average means (the averaging formula),
 and stopping the motor at the optimum point of grip, deter-
 mined by the time the torque reaches a maximum. 3 Id. at
 col. 4 ll. 15–20.




     3 The parallels between the written description and our
 interpretation of the claimed function reinforce the correct-
 ness of our interpretation. See Budde v. Harley-Davidson,
 Inc., 250 F.3d 1369, 1379–80 (Fed. Cir. 2001) (“In constru-
 ing [means-plus-function] 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.”).
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      Because the disclosed algorithm and the claimed func-
 tion both solve the problem of establishing the “optimum
 point of grip” when the microprocessor should signal the
 control circuit to cut power to the motor, an ordinarily
 skilled artisan would associate the algorithm and the func-
 tion. Given other simplifying assumptions disclosed by the
 patent, an ordinarily skilled artisan could perceive the
 bounds of the invention. For instance, the ’683 patent
 teaches that the preferred embodiment’s torque controller
 is designed to measure the value of a torque profile that is
 continuously increasing to a single peak before it drops.
 See ’683 patent fig.5; id. col. 2 ll. 43–64, col. 3 ll. 3–5. The
 smoothing mechanisms taught by the ’683 patent also help
 ensure that the torque curve takes this shape. See id. col. 3
 ll. 29–46. Given these assumptions—whether realistic or
 not—the ’683 patent need only describe a simple computa-
 tional process to define how to determine the time that the
 torque reaches a maximum. It does so: The microprocessor
 should “monitor” the motor current; when it detects a de-
 crease in current, torque has reached a maximum and the
 microprocessor should signal the controller to stop the mo-
 tor. We are persuaded that an ordinarily skilled artisan
 would find this a reasonably certain description of how the
 invention determines a time when the torque reaches a
 maximum, especially in view of the ultimate goal of deter-
 mining when to stop the screwdriver.
     Biomet does not persuade us otherwise, particularly
 given its burden to show clear and convincing evidence of
 indefiniteness. In addition to relying on a faulty interpre-
 tation of the claimed function, Biomet mistakenly fixates
 on the ’683 patent’s inability to solve certain technical
 problems that the patent does not profess to solve. Biomet
 further misplaces its focus in making an immaterial com-
 parison between the ’683 patent’s “algorithm” and the al-
 gorithm applied in IAD’s commercial embodiment (because
 the latter purportedly would solve the alleged technical
 problems). These arguments rest on an implicit critique of
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 10       INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                                AND THORACIC


 the ’683 patent perhaps relevant to other patentability cri-
 teria, but not persuasive when evaluating indefiniteness.
 Cf. Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875
 (Fed. Cir. 1993) (“The invention’s operability may say noth-
 ing about a skilled artisan’s understanding of the bounds
 of the claim.”); EON Corp. IP Holdings LLC v. AT & T Mo-
 bility LLC, 785 F.3d 616, 624 (Fed. Cir. 2015) (explaining
 the indefiniteness “question” as “whether the specification
 contains a sufficiently precise description of the ‘corre-
 sponding structure’ to satisfy section 112, paragraph 6, not
 whether a person of skill in the art could devise some
 means to carry out the recited function”).
      Nor does Biomet’s expert testimony alter this conclu-
 sion. Even if we consider the district court’s references to
 this testimony to be findings of fact, when the specification
 “unambiguously set[s] forth” the meaning of a claim term,
 expert testimony about the claim term becomes “irrelevant
 to the issue of indefiniteness.”         Personalized Media
 Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 706
 (Fed. Cir. 1998); see id. at 705–706 (explaining how the
 specification sufficiently informed an ordinarily skilled ar-
 tisan of the meaning of a claim term and thus rejecting ex-
 pert testimony that the specification’s disclosure was
 inadequate). Applying IAD’s sounder interpretation of the
 claimed function, the specification manifestly discloses an
 “algorithm” to perform that claimed function. Although
 the specification cannot itself unambiguously establish
 that the algorithm adequately defines the structure of the
 claimed function, Biomet’s expert testimony does not pro-
 vide clear and convincing evidence of the algorithm’s insuf-
 ficiency. 4 To the extent that this testimony even discusses


      4The district court indisputably did not make findings
 of fact from Biomet’s expert testimony regarding the suffi-
 ciency of the algorithm. The district court characterized
 the expert testimony as showing that the specification did
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 AND THORACIC


 the sufficiency of the specification’s disclosed algorithm,
 the testimony, like Biomet’s arguments, focuses on the
 “sufficiency of the written description to enable the practice
 of the invention of the claims” and not the “imprecision of
 the claims.” Personalized Media Commc’ns, LLC, 161 F.3d
 at 706.

     We would not hold out the ’683 patent as an exemplar
 of impeccable patent drafting. But given the simple prob-
 lem described by this patent, the brief passage taught in
 the specification suffices to define the bounds of the
 claimed solution. In claims 1 and 6, the invention deter-
 mines a time that torque reaches a maximum by using a
 microprocessor to detect a decrease in torque. A “decrease
 in current, corresponding to a drop in torque” provides a
 clear, reasonably certain boundary, particularly in light of
 the specification’s explanation of the assumptions inherent
 in the method. That is enough for definiteness.
                              IV
     We have considered the parties’ remaining arguments
 and find them unpersuasive. We agree with the district
 court that the disputed claim term is subject to a means-
 plus-function analysis. But we reverse the district court’s
 judgment holding the ’683 patent invalid for indefiniteness
 and remand for further proceedings consistent with this
 opinion.




 not disclose an algorithm, see J.A. 22, therefore foreclosing
 the possibility of fact-findings about the sufficiency of an
 algorithm. Evidence not relied on by the district court does
 not receive deferential review on appeal. Cf. CardSoft,
 807 F.3d at 1351 n.1 (“[T]he mere submission of extrinsic
 evidence is not enough to mandate deference to a district
 court’s claim construction.”).
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 12     INTELLIGENT AUTOMATION DESIGN v. ZIMMER BIOMET CMF
                                              AND THORACIC


      AFFIRMED-IN-PART, REVERSED-IN-PART,
                AND REMANDED
      No costs.
