Ibormeith v. Mercedes-Benz

“Means”-Defined Element without Specific Supporting Structure Invalid, Blackboard Déjà vu

Today in Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, __ F.3d __ (Fed. Cir. 2013)(Taranto, J.), aff’g, 889 F. Supp. 2d 677 (D.N.J. 2012), the court sustained a summary judgment ruling of invalidity under 35 USC § 112(f) based upon the absence of any specific structure in the specification corresponding to a means-defined element (“computational means”).

Lessons for Practice, Blackboard Déjà vu: Ibormeith once again restates the requirement for a disclosure of specific structure to support a means-defined element, absent which a claim is fatally indefinite under 35 USC § 112(b). Cases cited in Ibormeith include Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1382-83 (Fed. Cir. 2009); Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013); Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011); In re Freeman, 573 F.2d 1237, 1245 (CCPA 1978); AllVoice Computing PLC v. Nuance Comm’cns, Inc., 504 F.3d 1236, 1245-46 (Fed. Cir. 2007); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999).

About Harold Wegner (756 Articles)



Foley & Lardner LLP


Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.