United States Court of Appeals for the Federal Circuit

United States Court of Appeals

for the Federal Circuit

______________________

DIEBOLD NIXDORF, INC., DIEBOLD SELF-

SERVICE SYSTEMS,

Appellants

INTERNATIONAL TRADE COMMISSION,

Appellee

HYOSUNG TNS INC., NAUTILUS HYOSUNG

AMERICA INC.,

Intervenors

______________________

2017-2553

______________________

Appeal from the United States International Trade

Commission in Investigation No. 337-TA-989.

______________________

Decided: August 15, 2018

______________________

PATRICK FLINN, Alston & Bird LLP, Atlanta, GA, ar-

gued for appellants. Also represented by KEITH E.

BROYLES, PAMELA COUNCILL, DAVID FRIST, JOSHUA MARK

WEEKS; ADAM SWAIN, Washington, DC.

PANYIN HUGHES, Office of the General Counsel, Unit-

ed States International Trade Commission, Washington,

DC, argued for appellee. Also represented by DOMINIC L.

DIEBOLD NIXDORF, INC. v. ITC

BIANCHI, WAYNE W. HERRINGTON.

GREGORY G. GARRE, Latham & Watkins LLP, Wash-

ington, DC, argued for intervenors. Also represented by

GABRIEL BELL, ELANA NIGHTINGALE DAWSON, KEVIN

WHEELER.

______________________

Before PROST, Chief Judge, BRYSON and O’MALLEY,

Circuit Judges.

O’MALLEY, Circuit Judge.

Appellants Diebold Nixdorf, Inc. and Diebold Self-

Service Systems (together, “Diebold”) appeal the Interna-

tional Trade Commission’s (“ITC” or “Commission”)

finding that they violated § 337 of the Tariff Act of 1930

by importing components of automated teller machines

(“ATMs”) that infringe claims 1–3, 6, 8, and 9 of U.S.

Patent No. 8,523,235 (“the ’235 patent”). Diebold chal-

lenges the Commission’s determination that these claims,

all of which recite the term “cheque standby unit,” are not

invalid for indefiniteness. See Certain Automated Teller

Machines, ATM Modules, Components Thereof, and Prods.

Containing the Same, Inv. No. 337-TA-989, 2017 ITC

LEXIS 1603 (USITC Mar. 13, 2017). It also challenges

the Commission’s construction of certain claim limitations

and its application of those constructions to Diebold’s

accused ATM components and the asserted domestic

industry products. See id.

We conclude that the term “cheque standby unit” in

the ’235 patent is a means-plus-function term subject to

35 U.S.C. § 112, para. 6, which lacks corresponding struc-

ture disclosed in the specification. We therefore reverse

the Commission’s finding that Diebold violated § 337.

DIEBOLD NIXDORF, INC. v. ITC

I. BACKGROUND

A. The ’235 Patent

The ’235 patent describes an ATM—i.e., a “cash and

cheque automatic depositing apparatus”—that is capable

of performing banking transactions, and more particular-

ly is “capable of automatically depositing a bundle of

cashes and cheques inserted at once.” ’235 patent, col. 1,

ll. 6–11. It accomplishes these goals by performing sever-

al steps: (1) separating deposited bundles into individual

banknotes; (2) transferring those notes horizontally

through the ATM; (3) verifying the authenticity or ab-

normality of each note; (4) sorting and processing the

notes based on how each was verified; and (5) preparing

the notes for depositing into storage safes. Id. col. 1, l.

40–col. 2, l. 3.

One component recited in each of the ’235 patent’s

nine claims is a “cheque standby unit.” The claims specify

that the “cheque standby unit” is “placed in the main

transfer path between the first gate and the second gate”

and is “configured to hold the at least one authentic

cheque to return the at least one authentic cheque to the

user responsive to receiving user instructions cancelling

depositing of the at least one authentic cheque.” Id. col.

10, ll. 50–55.

The specification does not mention a “cheque standby

unit,” but instead references a “cheque temporary standby

unit” in three portions of the detailed description. First, it

explains that the ATM “includes a cheque temporary

standby unit 120 formed on the main transfer path 106a

provided at a rear side of the first gate 112, for temporari-

ly stopping a transfer of authentic cheques,” as well as

“an endorsement printing unit 122 followed by the cheque

temporary standby unit 120 on the main transfer path

106a, for printing endorsement information on the au-

thentic cheques according to printing instructions.” Id.

DIEBOLD NIXDORF, INC. v. ITC

col. 2, l. 62–col. 3, l. 2. It later explains the function of the

cheque temporary standby unit in more detail:

the cheque temporary standby unit 120 formed on

a specific section of the main transfer

path 106a between the first gate 112 and the

main transfer path 106a temporarily stops a

transfer of authentic cheques verified by the

banknote verifying unit 110. Before the cheques

are subjected to an endorsement printing indicat-

ing that the rights relating to the cheques are

transferred from customers to the bank, the

cheques are held for the user as an owner to input

an instruction. When a depositing instruction is

inputted, the cheques are transferred to the en-

dorsement printing unit 122. On the contrary,

when a depositing cancellation instruction is in-

putted, the cheques are transferred to the bundle

insertion opening 102 or the abnormal banknote

temporary storage 116 by a reverse driving of the

main transfer unit 106 so that they can be re-

turned to the user.

The endorsement printing unit 122 performs the

endorsement printing only when the banknote

verifying unit 110 verifies that the cheques are

authentic and, also, when the cheque temporary

standby unit 120 receives an owner’s final depos-

iting instruction.

Id. col. 5, ll. 40–59. Finally, the specification describes “a

preferable entire operation” of the invention, in which

checks that have been separated and transferred along

the main transfer path “are temporarily held by the

cheque temporary standby unit 120 formed on a specific

section of the main transfer path 106a,” where they are

held until a user selects either a depositing consent or

cancellation. Id. col. 7, l. 65–col. 8, l. 6. “Cheque tempo-

DIEBOLD NIXDORF, INC. v. ITC

rary standby unit 120” is depicted on the right-hand side

of Figure 2:

The “cheque standby unit” limitation was added during

prosecution to overcome prior art that purportedly per-

mitted cheques to be stored in a safe, but did not disclose

returning stored cheques to the user after the user can-

celed a deposit. J.A. 559–61, 564–65.

B. The ITC Proceedings

In February 2016, Intervenors Hyosung TNS Inc. and

Nautilus Hyosung America Inc. (together, “Hyosung”),

which own the ’235 patent by assignment, filed a com-

plaint with the ITC against Diebold,

alleging violations

of § 337 by reason of Diebold’s infringement of four pa-

tents related to ATMs. The Commission instituted an

During the pendency of the ITC proceedings,

Diebold acquired the majority of shares of German ATM

manufacturer Wincor Nixdorf, Inc., and was renamed

Diebold Nixdorf, Inc.

DIEBOLD NIXDORF, INC. v. ITC

investigation, and three of the four patents—all but the

’235 patent—were subsequently terminated from the

investigation pursuant to motions by Hyosung. The

accused products are Diebold’s ATMs that can receive and

process both cash and checks in a single, mixed bundle

that is inserted at once, and a module used in these

ATMs. J.A. 76–77.

The administrative law judge (“ALJ”), after holding

an evidentiary hearing, issued an Initial Decision, finding

not only that the accused module directly infringed claims

1–3, 6, 8, and 9 of the ’235 patent and that Diebold con-

tributorily infringed the claims by importing the module,

but also that the claims of the ’235 patent are not invalid.

In relevant part, the ALJ concluded that the term “cheque

standby unit” is not indefinite. First, he agreed with

Hyosung that the term should be given its plain and

ordinary meaning, concluding that a person of ordinary

skill in the art “would understand that a structure in an

ATM that temporarily holds checks pending the customer

confirming the deposit is the cheque standby unit,” and

that, “[i]n general, a cheque standby unit is the escrow

that temporarily holds checks.” J.A. 141. He expressly

credited the testimony of Hyosung’s expert, Dr. Howard,

stating he “described how the phrase ‘a cheque standby

unit’ would necessarily have a structural meaning to such

a person, and would refer to the physical portion of a

cash-and-check depositing module that is comprised of

well-known components for holding cheques in a standby

configuration pending user confirmation of the deposit.”

J.A. 141.

The ALJ also examined the claim limitation under the

assumption that “cheque standby unit” is a means-plus-

function term, and determined that the ’235 patent dis-

closes the required structure of “stacking and temporary

storage of media.” J.A. 142. The ALJ then stated that a

person of ordinary skill in the art would find correspond-

ing structure in Figure 2’s teaching of “a cheque standby

DIEBOLD NIXDORF, INC. v. ITC

unit 120 that temporarily stores at least one authentic

cheque by holding it in position on the belt.” J.A. 142.

The Commission, after undertaking review of the

ALJ’s Initial Decision on issues not involving the “cheque

standby unit,” issued its Final Determination finding a

violation of § 337, in addition to a Limited Exclusion

Order and Cease and Desist Orders. Diebold appeals. We

have jurisdiction under 28 U.S.C. § 1295(a)(6).

II. DISCUSSION

Diebold argues on appeal that “cheque standby unit”

is a purely functional term that connotes no specific

structure and is therefore subject to § 112, para. 6.

Specifically, it contends that the word “unit” is a “generic

nonce word” akin to “‘mechanism,’ ‘element,’ ‘device,’ and

other nonce words that reflect nothing more than verbal

constructs,” Appellant Br. 30 (quoting Williamson v.

Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015)

(en banc)), and highlights that the ’235 patent recites

thirteen different “unit” elements in the claims, each of

which has a unique function. Diebold explains that the

specification includes no discussion of a specific structure

of the “cheque standby unit,” and instead defines the term

exclusively by its function and location. It then points out

that Hyosung’s expert did not testify that the term

“cheque standby unit” connotes sufficiently definite struc-

ture, but instead testified that the term encompasses all

structures capable of fulfilling the function of temporarily

holding checks pending the customer confirming the

deposit, including a nonexhaustive list of structures as

varied as a “suction cup,” a “trap door,” and a “drum.”

Because the application leading to the ’235 patent

was filed prior to September 16, 2012, we apply pre-AIA

§ 112.

DIEBOLD NIXDORF, INC. v. ITC

The Commission and Hyosung first respond by argu-

ing that Diebold failed to present evidence of its own to

rebut the presumption that § 112, para. 6 does not apply

to this term. Second, they contend that the ALJ properly

determined that the term is not subject to application of

this provision because both the intrinsic and extrinsic

evidence—in particular, the expert testimony of Dr.

Howard—demonstrate that a person of ordinary skill in

the art would understand the term “cheque standby unit”

to denote structure. Finally, Hyosung argues that, even if

the term is subject to § 112, para. 6, the specification

recites sufficient structure for performing the claimed

function in Figure 2, in view of Dr. Howard’s testimony.

A. Standards of Review

We review the Commission’s final determinations un-

der the standards of the Administrative Procedure Act

(“APA”). See 19 U.S.C. § 1337(c) (stating that “[a]ny

person adversely affected by a final determination of the

Commission” may appeal to this court “for review in

accordance with chapter 7 of title 5”). Under the APA, we

review legal determinations de novo and findings of fact

for substantial evidence. Ajinomoto Co., Inc. v. Int’l Trade

Comm’n, 597 F.3d 1267, 1272 (Fed. Cir. 2010); Osram

GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1355 (Fed.

Cir. 2007).

“Regarding questions of claim construction, including

whether claim language invokes 35 U.S.C. § 112, para. 6,”

a trial court’s “determinations based on evidence intrinsic

to the patent as well as its ultimate interpretations of the

patent claims are legal questions that we review de novo.”

Williamson, 792 F.3d at 1346 (citing Teva Pharm. USA,

Inc. v. Sandoz, Inc., –– U.S. ––, 135 S. Ct. 831, 840–41

(2015)); see also Cisco Sys., Inc. v. Int’l Trade Comm’n,

873 F.3d 1354, 1360 (Fed. Cir. 2017) (“We review the

Commission’s claim construction determinations de novo

DIEBOLD NIXDORF, INC. v. ITC

except for subsidiary facts based on extrinsic evidence,

which we review for clear error.”).

B. Section 112, Para. 6 Applies

We conclude that the term “cheque standby unit” is

subject to the application of § 112, para. 6. Means-plus-

function claiming occurs when a claim term is drafted in a

manner that invokes § 112, para. 6, which states:

An element in a claim for a combination may be

expressed as a means or step for performing a

specified function without the recital of structure,

material, or acts in support thereof, and such

claim shall be construed to cover the correspond-

ing structure, material, or acts described in the

specification and equivalents thereof.

35 U.S.C. § 112, ¶ 6 (2006). As this court stated en banc

in Williamson, Congress, in enacting this provision,

“struck a balance in allowing patentees to express a claim

limitation by reciting a function to be performed rather

than by reciting structure for performing that function,”

while “placing specific constraints on how such a limita-

tion is to be construed”—that is, by restricting the “scope

of coverage to only the structure, materials, or acts de-

scribed in the specification as corresponding to the

claimed function and equivalents thereof.” 792 F.3d at

1347.

The standard by which we determine whether § 112,

para. 6 applies “is whether the words of the claim are

understood by persons of ordinary skill in the art to have

a sufficiently definite meaning as the name for structure.”

Id. at 1349 (citing Greenberg v. Ethicon Endo-Surgery,

Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)). As a procedural

matter, to determine whether § 112, para. 6 applies to a

claim limitation, we first look to whether the limitation

uses the word “means.” If so, there is a rebuttable pre-

sumption that § 112, para. 6 applies; if not, there is a

DIEBOLD NIXDORF, INC. v. ITC

rebuttable presumption that the provision does not apply.

Id. at 1348–49. Where, as here, a claim term lacks the

word “means,” the presumption can be overcome

and § 112, para. 6 will apply if the challenger demon-

strates that the claim term fails to “recite sufficiently

definite structure” or else recites “function without recit-

ing sufficient structure for performing that function.” Id.

at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880

(Fed. Cir. 2000)).

Diebold has shown that the term “cheque standby

unit,” as understood by one of ordinary skill in the

art, both fails to recite sufficiently definite structure and

recites a function without reciting sufficient structure for

performing that function. Examining the evidence intrin-

sic to the ’235 patent, we observe that the claims do not

recite any structure, much less “sufficiently definite

structure,” for the “cheque standby unit.” Rather, the

claims describe the term “cheque standby unit” solely in

relation to its function and location in the apparatus.

Claim 1 specifies that the unit must be “placed in the

main transfer path between the first gate and the second

gate” and requires that it be “configured to hold the at

least one authentic cheque to return the at least one

authentic cheque to the user responsive to receiving user

instructions cancelling depositing of the at least one

authentic cheque.” ’235 patent, col. 10, ll. 50–55. None of

the dependent claims add limitations that either describe

particular structural features or flesh out whether the

term has a particular structural meaning. And the speci-

fication similarly explains that the “cheque temporary

standby unit” is “formed on the main transfer path 106a”

and is used to “temporarily stop[ ] a transfer of authentic

cheques,” without making clear what, if any, structures

correspond to the claim term. Id. col. 2, l. 62–col. 3, l. 2.

Indeed, although the specification includes a drawing,

Figure 2, which purports to illustrate the term, it depicts

“cheque temporary standby unit 120” as a vertical line

DIEBOLD NIXDORF, INC. v. ITC

indistinguishable from the “main transfer path 106a” that

both precedes and follows it and on which it is “formed.”

Id. at Fig. 2.

Although these passages suggest that the “cheque

standby unit” must have some structure to perform the

function of holding checks and then either returning them

to the user or continuing to process them pending a user

instruction, the ’235 patent does not offer any clues as to

what such a structure might be.

Indeed, the written

description does not include any examples of what struc-

tures or class of structures fall within the definition of a

“cheque standby unit.” Nor does the fact the “cheque

At oral argument, counsel for the Commission for

the first time mentioned a patent application incorporated

by reference in the ’235 patent’s specification, arguing

that element 114 of this incorporated patent application,

referred to as a “temporary standby unit,” shows a struc-

ture corresponding to the “cheque standby unit.” Oral

Arg. at 18:14–19:33, available at

http://oralarguments.cafc. uscourts.gov/default.aspx?fl=20

17-2553.mp3 (referencing J.A. 5585). Putting aside the

question of waiver, counsel admitted that the section of

the ’235 patent in which this application is incorporated is

directed only to the invention’s tripartite sensors. Id. at

21:15–26. The extent to which material has been incorpo-

rated by reference into a host document is a question of

law, Advanced Display Systems, Inc. v. Kent State Univer-

sity, 212 F.3d 1272, 1283 (Fed. Cir. 2000), and we con-

clude that the ’235 patent’s incorporation of this applica-

application expressly for its “detailed description” of two

sensors is insufficient to incorporate the application for its

“temporary standby unit,” ’235 patent, col. 5, ll. 3–6.

Counsel admitted, moreover, that the Commission did not

rely on this incorporated application, but relied instead on

the testimony of Dr. Howard. Oral Arg. at 20:00–07.

DIEBOLD NIXDORF, INC. v. ITC

standby unit” must be formed on the main transfer unit

between the first and second gates offer any guidance

“that might inform the structural character of the limita-

tion-in-question or otherwise impart structure” to the

term as recited in the claims, Williamson, 792 F.3d at

1351, particularly where the lone figure in which the unit

is depicted illustrates no corresponding structure.

Our analysis of whether § 112, para. 6 applies does

not end with this observation, however, as the Commis-

sion credited Dr. Howard’s expert testimony in determin-

ing that the term “cheque standby unit” connotes

sufficiently definite meaning as the name for structure to

persons of ordinary skill in the art. Diebold argues that,

because this testimony was based purely on Dr. Howard’s

interpretation of the intrinsic record, we should decline to

consider it and review the Commission’s claim construc-

tion de novo. Diebold further argues that, even if the

Commission was entitled to rely on Dr. Howard’s testimo-

ny, we should nevertheless reverse because he testified

that the term “cheque standby unit” fails to connote any

particular structure.

The Commission and Hyosung raise two arguments in

response. First, they contend that, because Diebold failed

to present affirmative evidence of how a person of ordi-

nary skill would understand the claim language, Diebold

failed to rebut the presumption against the application of

§ 112, para. 6. Second, they submit both that the Com-

mission was entitled to credit Dr. Howard’s testimony,

and that such testimony was sufficient to demonstrate

that the term “cheque standby unit” had a structural

meaning to persons of skill in the art at the relevant time.

We reject both of the Commission and Hyosung’s argu-

ments, and conclude that the term is subject to § 112,

para. 6.

First, none of our cases mandate that a party seeking

to overcome the presumption against application of § 112,

DIEBOLD NIXDORF, INC. v. ITC

para. 6 can only do so by presenting extrinsic evidence

that one of ordinary skill would fail to understand that a

term connotes a definite structure. Imposing such a

requirement would be inconsistent with the Supreme

Court’s guidance in Teva Pharmaceuticals, where the

Court held that, even in cases in which the district court

finds a need to look beyond the patent’s intrinsic evidence

and to consult extrinsic evidence, the district court must

still conduct a legal analysis: “whether a skilled artisan

would ascribe that same meaning to that term in the

context of the specific patent claim under review.” 135 S.

Ct. at 841. This is because “‘[e]xperts may be examined to

explain terms of art, and the state of the art, at any given

time,’ but they cannot be used to prove ‘the proper or legal

construction of any instrument of writing.’” Id. (alteration

in original) (quoting Winans v. N.Y. & Erie R. Co., 21

How. 88, 100–01 (1859)). In short, trial courts, after

deciding factual disputes, must interpret patent claims in

light of the facts that they found—“[t]his ultimate inter-

pretation is a legal conclusion,” and “appellate court[s]

can still review the [tribunal’s] ultimate construction of

the claim de novo.” Id. We specifically applied Teva’s

holding in the context of § 112, para. 6 in Skky, Inc. v.

MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017), ex-

plaining that “[t]he task of determining whether the

relevant claim language contains a means-plus-function

limitation is . . . a question of law that we review de novo.”

Id. at 1019 (alteration in original) (quoting TriMed, Inc. v.

Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008)).

Thus, in appropriate cases, a party advocating that a

claim limitation that does not recite the word “means” is

subject to § 112, para. 6 can overcome the presumption

against its application solely by reference to evidence

intrinsic to the patent. Diebold’s failure to contradict Dr.

Howard’s testimony with extrinsic evidence is not fatal to

its ability to overcome the presumption, as the Commis-

sion and Hyosung argue, unless we conclude that Dr.

DIEBOLD NIXDORF, INC. v. ITC

Howard’s testimony was sufficient to overcome conclu-

sions drawn from the intrinsic record. We conclude it was

not.

The Commission relied on paragraphs 185, 186, and

189 of Dr. Howard’s Witness Statement in determining

that the term “cheque standby unit” is not a means-plus-

function term. It did not cite, and Hyosung did not intro-

duce, any other evidence, such as dictionary definitions,

suggesting that “cheque standby unit” is a term commonly

understood by persons of ordinary skill in the art to

denote a device or class of devices. Cf. Greenberg, 91 F.3d

at 1583 (relying on dictionary definitions that “make clear

that the noun ‘detent’ denotes a type of device with a

generally understood meaning in the mechanical arts,

even though the definitions are expressed in functional

terms,” and explaining that what matters is whether “the

term, as the name for structure, has a reasonably well

understood meaning in the art”). But, even crediting the

entirety of Dr. Howard’s testimony, we conclude, as a

matter of law, that the term “cheque standby unit” is

subject to the application of § 112, para. 6.

The Commission relied on Dr. Howard’s testimony

that “a person of ordinary skill in the art would readily

understand that a structure in an ATM that temporarily

holds checks pending the customer confirming the deposit

is the cheque standby unit,” and that, “[i]n general, a

cheque standby unit is the escrow that temporarily holds

checks.” J.A. 3219 ¶ 186. It also relied on his testimony

that the term “would necessarily have a structural mean-

ing” to a person of ordinary skill in the art, who would

understand the unit must be “comprised of well-known

components for holding cheques in a standby configura-

tion pending user confirmation of the deposit,” and must

“interface with the main transfer path.” J.A. 3219–20

¶ 189. And it credited his testimony that “[a] person of

ordinary skill in the art would also understand the stack-

DIEBOLD NIXDORF, INC. v. ITC

ing and temporary storage of media in figure 2” of the ’235

patent in a different portion of its ID. J.A. 3222 ¶ 192.

None of these findings demonstrate that the term

“cheque standby unit” had a reasonably well understood

meaning in the art at the time of the invention. Green-

berg, 91 F.3d at 1583. Adopting the approach taken by

the inventors of the ’235 patent, Dr. Howard offered

purely functional definitions of the term “cheque standby

unit.” Nowhere in his testimony does he explain with any

degree of definiteness what structure or class of struc-

tures a person of ordinary skill would understand the

term to encompass. He did not define an “escrow,” did not

explain what “well-known components” a skilled artisan

would understand could be used to design a “cheque

standby unit,” and did not articulate how the fact that the

“cheque standby unit” must “interface with the main

transfer path” dictates any aspect of the unit’s structure.

At oral argument, counsel for Hyosung argued

that Dr. Howard’s oral testimony that “escrow units” were

“well known” demonstrates that persons of ordinary skill

in the art knew the equivalent term “cheque standby

unit” is a sufficiently definite name for structure. See J.A.

1631:12–20. He invited the court to “Google ATM escrow

unit” to see that the term has a specific, structural mean-

ing to persons of ordinary skill, akin to words like “brake,”

“lock,” and “screwdriver.” Oral Arg. at 26:00–26:13.

Hyosung did not present any such evidence to the Com-

mission, however, nor did the Commission find that the

term “escrow unit” conveys a particular structural mean-

ing to skilled artisans. Counsel for Hyosung also express-

ly declined to conclude that the scope of the term “cheque

standby unit” is limited to structures falling in the pur-

portedly well-understood group of structures known as

“escrow units.” Id. at 26:13–26:24. And, counsel present-

ed no evidence or argument indicating that the “escrow

DIEBOLD NIXDORF, INC. v. ITC

He likewise failed to offer any structural limitation that

might serve to cabin the scope of the functional term. In

essence, Dr. Howard did little more than opine that a

skilled artisan would understand the functional term

“cheque standby unit” to be any structure capable of

performing the claimed function.

Hyosung offered no

other extrinsic evidence to demonstrate that the term

“cheque standby unit” has a sufficiently definite structur-

al meaning to persons of ordinary skill in the art, and the

Commission made no such fact-findings.

This case is therefore distinguishable from the cases

on which the Commission and Hyosung rely. First, in

Inventio AG v. Thyssenkrupp Elevator Americas Corp.,

649 F.3d 1350 (Fed. Cir. 2011), overruled on other grounds

by Williamson, 792 F.3d at 1339, we found that the writ-

ten descriptions of the patents “indicate[d] that the ‘com-

puting unit’ connotes structure to skilled artisans” by

expressly referring to the computing unit as “a commer-

cially available personal computer or workstation” and by

noting that the term includes “at least one processor and

at least one data memory.” Id. at 1359–60. Here, by

contrast, the specification does not describe what an

exemplary “cheque standby unit” might be, nor does it

describe a class of structures to which the “cheque

standby unit” belongs.

units” to which he referred either existed or were well

known as of the date of the application for the ’235 patent.

For these reasons, we do not countenance Hyosung’s

arguments concerning “escrow units.”

As noted, during trial before the Commission, Dr.

Howard testified that, in his opinion, the phrase “cheque

standby unit” was broad enough to cover structures as

distinct as a suction cup, a trapdoor, and a drum, without

limitation.

DIEBOLD NIXDORF, INC. v. ITC

In Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364

(Fed. Cir. 2003), we considered whether claim limitations

reciting “circuits” were subject to § 112, ¶ 6. We began by

noting that the term “circuit,” which one dictionary de-

fines as “the combination of a number of electrical devices

and conductors that, when interconnected to form a

conducting path, fulfill some desired function,” “by itself

connotes some structure,” and explained that “the term

‘circuit’ with an appropriate identifier such as ‘interface,’

‘programming’ and ‘logic,’ certainly identifies some struc-

tural meaning to one of ordinary skill in the art.” Id. at

1373. We then observed that nothing in the specification

or prosecution history was inconsistent with the ordinary

meaning of the term “circuit,” and pointed out that the

Raritan’s experts’ testimony “show[ed] only that the term

‘circuit’ is understood by one of ordinary skill in the art as

a very broad term and that one of the accused products

included several of the circuit elements.” Id. at 1373–74.

Here, however, the word “unit,” which the ’235 patent

uses to describe thirteen distinct components of the

invention, does not, standing alone, connote any particu-

lar structure. Nor is sufficient structure imparted by

modifying the word “unit” with the words “cheque” and

“standby” or by specifying the location of the “cheque

standby unit.” The ’235 patent offers no guidance as to

what structure or class of structures “placed in the main

transfer path” might be capable of performing the func-

tion of holding checks pending user instructions.

Finally, in Greenberg, we were tasked with deciding

whether the term “detent mechanism” was subject to

§ 112, para. 6. The district court concluded that it was,

both because the term did not describe a particular struc-

ture but instead described any structure that performed a

detent function, and because both the dictionary defini-

tion of the word “detent” and the definition of “detent

mechanism” offered by Dr. Greenberg’s expert “were

expressed in functional terms.” 91 F.3d at 1583. We

DIEBOLD NIXDORF, INC. v. ITC

disagreed. First, we recognized that “[m]any devices take

their names from the functions they perform,” including

“filter,” “brake,” and “clamp,” and concluded that “detent”

is “just such a term.” Id. We explained that dictionary

definitions “make clear that the noun ‘detent’ denotes a

type of device with a generally understood meaning in the

mechanical arts, even though the definitions are ex-

pressed in functional terms.” Id. And although “the term

‘detent’ does not call to mind a single well-defined struc-

ture,” we observed that “the same could be said of other

commonplace structural terms such as ‘clamp’ or ‘contain-

er.’” Id. “What is important is not simply that a ‘detent’

or ‘detent mechanism’ is defined in terms of what it does,

but that the term, as the name for structure, has a rea-

sonably well understood meaning in the art.” Id.

This case is unlike Greenberg, as there is no evi-

dence—in the form of dictionary definitions or other-

wise—that “cheque standby unit” was reasonably well

understood by persons of ordinary skill in the art to refer

to a structure or class of structures. See Skky, 859 F.3d at

1019 (stating that a limitation may recite sufficiently

definite structure “even if the term covers a broad class of

structures and even if the term identifies the structures

by their function” (quoting TecSec, Inc. v. Int’l Bus.

Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013))). All

the record contains is one expert’s unsupported, and

largely unhelpful, opinion that skilled artisans would

have understood that a “cheque standby unit” has a

particular function and can be made of “well-known

components for holding cheques in a standby configura-

tion pending user confirmation of the deposit.”

Instead, we find this case to be analogous to Advanced

Ground Information Systems, Inc. v. Life360, Inc., 830

F.3d 1341 (Fed. Cir. 2016), which concerned the term

“symbol generator.” There, we held that the term “symbol

generator” invokes the application of § 112, para. 6 be-

cause “it fails to describe a sufficient structure and other-

DIEBOLD NIXDORF, INC. v. ITC

wise recites abstract elements ‘for’ causing actions,” or

“elements ‘that can’ perform functions.” Id. at 1347–48.

In relevant part, we rejected the patentee’s argument that

its expert presented unrebutted testimony that those

skilled in the art would have understood what a “symbol

generator” is, and would have known how to select and

use one from the well-known class of software modules,

for two reasons. First, we observed that the expert “testi-

fied that the term ‘symbol generator’ is a term coined for

the purposes of the patents-in-suit.” Id. at 1348. Second,

we pointed out that there was no evidence that the term

was “used in ‘common parlance or by persons of skill in

the pertinent art to designate structure,’ such that it

connotes sufficient structure to avoid the application of”

§ 112, para. 6. Id. (quoting Lighting World, Inc. v. Birch-

wood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir.

2004), overruled on other grounds by Williamson, 792 F.3d

at 1348–49). Here, too, neither the Commission nor

Hyosung point to documentary evidence that the term

“cheque standby unit” was used either in “common par-

lance” or by skilled artisans in the pertinent field to

designate structure. Id. Nor do they dispute Diebold’s

contention that the term, which was added to the claims

during prosecution, was “coined by the applicant himself

for purposes of claiming his invention.” Appellant Br. 31.

C. The Specification Does Not Disclose

Sufficient Structure Corresponding

to the Claimed Function

Having concluded that the term “cheque standby unit”

is subject to application of § 112, para. 6, we next deter-

mine whether the specification discloses sufficient struc-

ture that corresponds to the claimed function, which the

parties do not dispute is “holding the at least one authen-

tic cheque to return the at least one authentic cheque to

the user responsive to receiving user instructions cancel-

ling depositing of the at least one authentic cheque.” It

does not.

DIEBOLD NIXDORF, INC. v. ITC

“Structure disclosed in the specification qualifies as

‘corresponding structure’ if the intrinsic evidence clearly

links or associates that structure to the function recited in

the claim.” Williamson, 792 F.3d at 1352 (citing Noah

Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir.

2012)). “Even if the specification discloses corresponding

structure, the disclosure must be of ‘adequate’ correspond-

ing structure to achieve the claimed function.” Id. (cita-

tion omitted). Thus, under § 112, paras. 2 and 6, if a

person of ordinary skill in the art would be unable to

recognize the structure in the specification and associate

it with the corresponding function in the claim, a means-

plus-function clause is indefinite. Id. (citation omitted).

Although the Commission found that “[f]igure 2 of the

’235 patent teaches a cheque standby unit 120 that tem-

porarily stores at least one authentic cheque by holding it

in position on the belt,” J.A. 142, no structure is disclosed

in the figure or written description that is capable of

performing this function. Instead, all that is depicted in

the figure for item 120 is a pair of vertical lines that

wraps around the outside of two cylinders. These lines

are indistinguishable from main transfer unit 106a,

which both precedes and follows item 120. The corre-

sponding portions of the written description likewise do

not describe any structure capable of “holding [cheques] in

position on the belt.” Nor does the written description—

including the portions cited by the Commission—

reference “the stacking and temporary storage of media.”

Cf. J.A. 142. Even had the specification included this

phrase, it would still describe only function, not structure,

and therefore would be insufficient to constitute “‘ade-

quate’ corresponding structure to achieve the claimed

function.” Williamson, 792 F.3d at 1352.

Because the ’235 patent fails to disclose any structure

corresponding to the function of “holding the at least one

authentic cheque to return the at least one authentic

cheque to the user responsive to receiving user instruc-

DIEBOLD NIXDORF, INC. v. ITC

tions cancelling depositing of the at least one authentic

cheque,” we conclude that claims 1–3, 6, 8, and 9 are

invalid for indefiniteness under 35 U.S.C. § 112, para. 2.

III. CONCLUSION

For the foregoing reasons, we reverse the Commis-

sion’s finding that Diebold violated § 337.

REVERSED

COSTS

Costs to appellant.