Stiftung v. Renishaw PLC

Stiftung v. Renishaw PLC
945 F.2d 1173
Bluebook cite
Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed. Cir. 1991).
945 F.2d 1173
Item Type
Patent infringement action. The patents involved were directed to coordinate measuring machines. Specifically, the invention involved a touch-trigger probe which utilized a stylus which could move slightly within its mount, allowing for deflection upon contact with an object. The deflection disturbed the seating of convergent surfaces and broke an electrical circuit, thus sending a signal to the coordinate measuring machine that contact had been made.

One of the issues for the court was the validity of one of the claims, which was directed to a “device for mounting a stylus in position-determining apparatus” but which did not include mention of any signaling means or electric circuitry. Id. at 1179. The district court found that this claim was for an inoperable probe, because the invention described in the specification required both deflection as well as detection of that deflection. Thus, the district court held that the claim was invalid for lack of utility under § 101.

The Federal Circuit reversed the district court on this issue. First, the court stated that although a new product or process must be “operable” to meet the utility requirement of § 101, this does not mean that the invention must accomplish all objectives stated in the specification. Id. at 1180. The court also noted that an invention need not be the best or only way to accomplish a certain result, that an invention need only be useful to some extent and in some applications, and that whether an invention lacks utility is a question of fact. The court found that claim 3 referred not to a complete probe, but rather only to the function of mounting a stylus in position-determining apparatus. Thus, finding that claim 3 did perform that function, by requiring that a probe be mounted in a yielding manner, the court found that claim 3 did have utility under § 101.

Excerpts and Summaries

Thursday 02 of October, 2008 14:20:43 GMT
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Thursday 02 of October, 2008 14:20:43 GMT
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