                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit


                                       2007-1108


                      MAURICE MITCHELL INNOVATIONS, L.P.,

                                                       Plaintiff-Appellant,

                                            v.

                                INTEL CORPORATION,

                                                       Defendant-Appellee.


      Richard L. Schwartz, Whitaker, Chalk, Swindle & Sawyer, L.L.P., of Fort Worth,
Texas, argued for plaintiff-appellant. Of counsel on the brief was Manny D. Pokotilow,
Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., of Philadelphia, Pennsylvania.

       Robert A. Van Nest, Keker & Van Nest LLP, of San Francisco, California, argued
for defendant-appellee. With him on the brief were Christa M. Anderson and Steven A.
Hirsch.

Appealed from: United States District Court for the Eastern District of Texas

Judge Leonard Davis
                      NOTE: This disposition is nonprecedential.


     United States Court of Appeals for the Federal Circuit

                                       2007-1108

                      MAURICE MITCHELL INNOVATIONS, L.P.,

                                                   Plaintiff-Appellant,

                                           v.

                                INTEL CORPORATION,

                                                   Defendant-Appellee.


                           ___________________________

                            DECIDED: September 24, 2007
                           ___________________________

Before RADER, MOORE, Circuit Judges, and YEAKEL, District Judge*.

RADER, Circuit Judge.

       The United States District Court for the Eastern District of Texas granted Intel

Corporation's ("Intel") motion for summary judgment that claim 1 of U.S. Patent No.

4,875,154 ("the '154 patent") is invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2.

Maurice Mitchell Innovations, L.P. v. Intel Corp., No. 2:04-CV-450 (E.D. Tex. Dec. 11,

2006) ("Final Judgment"); Maurice Mitchell Innovations, L.P. v. Intel Corp., No. 2:04-CV-

450 (E.D.Tex Nov. 22, 2006 ("Opinion"); Maurice Mitchell Innovations, L.P. v. Intel

Corp., No. 2:04-CV-450 (E.D. Tex. Jun. 21, 2006) ("Claim Construction Opinion").

Because the district court correctly construed the claim term "means for causing" as a




*   Honorable Lee Yeakel, District Judge, United States District Court for the Western
    District of Texas, sitting by designation.
means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 and correctly found the

specification did not contain any corresponding structure, this court affirms.

                                             I

       The United States Patent and Trademark Office issued the '154 patent, entitled

Microcomputer with Disconnected, Open, Independent, Bimemory Architecture,

Allowing Large Interacting, Interconnected Multi-microcomputer Parallel Systems

Accomodating [sic] Multiple Levels of Programmer Defined Heirarchy [sic], on October

17, 1989 from an application filed on June 12, 1987. The patent abstract states:

       A Bimemory Independent CPU (BICPU) microcomputer which is
       comprised of a known CPU chip provided with additional circuitry to
       enable CPU to interact in a multi BICPU microcomputer system. Each
       BICPU microcomputer in a system is supplied with an assigned standard
       memory mechanically and logically connected to it's [sic] BICPU's "A" bus
       circuits. The BICPU microcomputer is also provided with connectors
       enabling the CPU to be connected to system buses. Any number of
       BICPU microcomputers can be logically chained, linked and treed in a
       simple logical bimemory independent pattern infinitely in as many
       dimensions as is reasonably desired, using one standard set of dedicated,
       simple, single line conductors (system buses) to mechanically
       interconnect any "B" or "C" bus curcuits [sic] of two different BICPU
       microcomputers.

'154 Patent Abstract.    Generally, the patent describes a BICPU computer system

"comprised of a known CPU chip with additional circuitry to enable the CPU to interact

in a multi BICPU microcomputer system." '154 Patent col.7 ll.3-6. According to the

specification, the invention allows "[a]ny number of BICPU microcomputers [to] be

logically chained, linked and treed in a simple logical bimemory independent pattern

infinitely in as many dimensions as is reasonably desired, using one standard set of

dedicated, simple, single line conductors (system buses) to mechanically interconnect




2007-1108                                    2
any 'B' or 'C' bus circuits of two different BICPU microcomputers." '154 Patent col.7

ll.12-19. Claim 1 reads:

      A microcomputer data processing apparatus, comprising:
      [1] a Central Processing Unit (CPU),
      [2] a path configuring means,
      [3] path control circuits connecting said CPU to said path configuring
               means,
      [4] a plurality of contacts comprised of a plurality of distinct sets,
      [5] wherein said CPU further comprises a dedicated memory address
               circuit, a dedicated memory data circuit, a dedicated memory
               control circuit and a dedicated power circuit,
      [6] wherein said path configuring means further comprises a dedicated
               memory address circuit, a dedicated memory data circuit and a
               dedicated memory control circuit,
      [7] wherein each dedicated memory address, data, and control circuit
               includes a plurality of dedicated memory address, data, and control
               lines respectively, wherein
      [8] said memory control lines are comprised of a read/write line, timing
               lines and status lines,
      [9] first switch means comprised of at least three distinct parts of
               connecting said dedicated memory address, data, and control
               circuits of said path configuring means to each of said first three
               sets of        contacts, and
      [10] second switch means for connecting said dedicated memory address,
               data, and control lines of said path configuring means to said
               dedicated memory address, data, and control lines of said CPU
               respectively,
      [11] wherein said first and second switch means assume a non signal-
               conducting state when said CPU power circuit is not supplied with
               power,
      [12] wherein said lines of said CPU an said contacts assume a non-signal
               conducting state when said first and second switch means are in
               said non-signal conducting state,
      [13] means for causing said first and second switch means to remain in
               said non signal-conducting state upon application of power to said
               CPU power circuit and to assume a signal-conductive state upon
               receipt of an appropriate signal from said CPU, and to
      [14] assume a non signal-conducting state upon receipt of an appropriate
               signal from said CPU.

'154 Patent col.90 l.59 – col.91 l.37 (emphases and [limitation numbers] added).




2007-1108                                  3
       Maurice Mitchell Innovations, L.P. ("Mitchell") brought suit against Intel in the

United State District Court for the Eastern District of Texas alleging a number of Intel's

products infringe Claim 1 of the '154 patent. In construing the claims, the district court

adopted the claim construction of District Judge Susan Illston of the United States

District Court for the Northern District of California. Claim Construction Opinion; see,

Maurice Mitchell v. Samsung Electronics Co., Ltd., No. C 01-0295 SI (N.D. Cal. Jan. 29,

2002). Specifically, the district court construed "first switch means," "second switch

means," and "means for causing" as means-plus-function limitations governed by 35

U.S.C. § 112, ¶ 6.      Id.   The district court then determined that the '154 patent

specification did not disclose structure for the "switch means" limitations and the "means

for causing" limitation. Opinion. As a result, the district court found Claim 1 of the '154

patent indefinite and therefore invalid as a matter of law. Id.

                                             II

       This court reviews a district court's grant of summary judgment without

deference, drawing all justifiable inferences in favor of the nonmovant. Genentech, Inc.

v. Amgen, Inc., 289 F.3d 761, 767 (Fed. Cir. 2002). Claim construction is a matter of

law that this court reviews without deference. Cybor Corp. v. FAS Techs., Inc., 138

F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v. Westview Instruments, Inc., 52

F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).               "The review of

indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law

without deference." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338

(Fed. Cir. 2005).




2007-1108                                    4
      "A patent issued from the United States Patent and Trademark Office (PTO)

bears the presumption of validity under 35 U.S.C. § 282.          An accused infringer,

therefore, must prove patent invalidity under the clear and convincing evidentiary

standard." Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365

(Fed. Cir. 2004).    Specifically, "[t]he claims as granted are accompanied by a

presumption of validity based on compliance with, inter alia, § 112 ¶ 2." S3 Inc. v.

NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001).

      As stated in § 112 ¶ 2, "[t]he specification shall conclude with one or more

claims particularly pointing out and distinctly claiming the subject matter which the

applicant regards as his invention."    Claims "particularly point[ ] out and distinctly

claim[ ]" the invention when one of ordinary skill in the art would understand the scope

of the invention when the claims are read in conjunction with the specification. Default

Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir.

2005); 35 U.S.C. § 112 ¶ 2. But, if an applicant "employs means-plus-function language

in a claim, one must set forth in the specification an adequate disclosure showing what

is meant by that language." In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en

banc); 35 U.S.C. § 112 ¶ 6. Therefore, "[i]f there is no structure in the specification

corresponding to the means-plus-function limitation in the claims, the claim will be found

invalid as indefinite." Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950

(Fed. Cir. 2007).

                                            III

      The district court found that "means for causing" was a means-plus-function

limitation without any descriptive corresponding structure within the specification. The




2007-1108                                   5
only possible structure corresponding to the claimed function appears at Col.24 l.67 to

Col.25 l. 56. Opinion, slip op. at 8. The district court then determined this passage did

not contain any structure.

       As illustrated by the claim language in limitation 13, the "means for causing"

controls the first and second switch means. In other words, the "means for causing"

would need a structure (i.e., device or driver) to control the function of the switch

means.    Mitchell contends that the '154 patent specification contains an adequate

disclosure corresponding to the "means for causing" limitation to satisfy § 112 ¶ 2.

Mitchell argues that the district court incorrectly limited the corresponding structure to

the disclosure at Col.24 l.67 to Col.25 l.56 when the following additional passages also

disclose structure: Col.15, ll.40-56; Col.19, line 34 to Col.20, line 5; Col.13, ll.11-19;

Col.7, ll.37-44; Col.44, ll.21-46; Col.89, ll.14-49; Col.90, ll.16-30; and Col.16, ll.48-53.

       Like the district court, however, this court discerns little, if any, structure for

"means for causing" in the specification and no disclosed link between that purported

structure and the claimed function. This court also credits the district court's finding that

Mitchell's counsel admitted during the summary judgment hearing that the Col.24 l.67 to

Col.25 l.56 passage does not include any structure linked to the claimed function.

Maurice Mitchell Innovations v. Intel Corp., 2:04cv450, slip op. at 35 (E.D. Tex. Sept.

28, 2006) (Transcript of Pretrial and Motion Hearing). Beyond that passage, however,

this court finds no specific structure disclosed anywhere in the specification to carry out

the "means for causing" function.

       Mitchell also offers another source of structure for the claimed means. The

specification refers to the MCS6520 Peripheral Interface Adaptor ("PIA"). '154 Patent




2007-1108                                      6
col.15 ll.40-55. The MCS6520 is a complex integrated circuit (i.e., chip) containing

numerous individual circuits which functions as an interface between a microprocessor

and peripheral devices such as printers, displays and the like. Mitchell contends that

the MCS6520 contains tri-state circuitry or tri-state drivers and that a person of ordinary

skill in the art would understand the tri-state structure in the MCS6520 to be capable of

performing the "means for causing" function.

       While the MCS6520 may contain tri-state or driver type circuits, the specification

does not identify the tri-state circuits in the MCS6520 as the structure to carry out the

"means for causing" limitation. The mere mention of a complicated integrated circuit,

comprised of hundreds if not thousands of circuits, is much too broad to sufficiently

indicate the precise "means for causing" structure to a person of ordinary skill in the art.

See Med. Instrumentation & Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed.

Cir. 2003) ("It is important to determine whether one of skill in the art would understand

the specification itself to disclose the structure, not simply whether that person would be

capable of implementing that structure."). In other words, as the district court noted, the

MCS6520 is both too broad and not linked to the "means for causing" limitation.

Opinion, slip op. at 8-9.

       Mitchell also attempts to identify structure in a variety of generalized passages in

the specification.   This court has examined these passages and finds no specific

structure. Mitchell only states that "[t]hese passages are additional disclosures of the

details of the structure, readily apparent to a person of ordinary skill in the art." In effect,

Mitchell merely references various passages in the specification without providing any

information to show structure corresponding to "means for causing." Mitchell appears to




2007-1108                                      7
be arguing that a person of ordinary skill in the art would be able to ascertain the

corresponding structure by combining a variety of passages in the specification with

their knowledge of the art. However, "in order for a claim to meet the particularity

requirement of ¶ 2, the corresponding structure(s) of a means-plus-function limitation

must be disclosed in the written description in such a manner that one skilled in the art

will know and understand what structure corresponds to the means limitation." Atmel

Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). Thus, the

statute requires more than just the possibility that an artisan of ordinary skill may be

able to figure out the corresponding structure. The quid pro quo for using a means-

plus-function limitation requires specificity in reciting structure and linking that structure

to the limitation. Id. Mitchell does not carry out its part of the quid pro quo bargain.

This court sustains the finding that claim 1 is indefinite under U.S.C. § 112, ¶ 2.

       This court need not reach the "switch means" and "path configuring means"

limitations because the district court's decision can be affirmed solely on the "means for

causing" limitation.

                                             IV

       Because the district court correctly construed the claim term "means for causing"

as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 and correctly found the

specification did not contain any corresponding structure for this limitation, this court

affirms.



                                        AFFIRMED




2007-1108                                     8
                                      COSTS

     Each party shall bear its own costs.




2007-1108                                   9
