Means-Plus-Function Claims – “Algorithm” can be expressed in any understandable terms including in prose
Kumiko Ide | December 28, 2011
Typhoon Touch Technologies, Inc. v. Dell, Inc. et al.
CAFC, November 4, 2011
Panel: Rader, Newman, Prost. Opinion by Newman
The United States District Court for the Eastern District of Texas held the patents in suit invalid and not infringed. On appeal, the CAFC affirmed the district court’s rulings concerning the claim terms “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless.” However, CAFC reversed the district court’s ruling that the claim term “means for cross-referencing” is indefinite for failing to satisfy the requirements of 35 U.S.C. Section 112 ¶ 2. CAFC disagreed with the district court and held that the term “means for cross-referencing” is supported by the “structure, materials, or acts” in the specification.
Plaintiff-Appellant, Typhoon Touch Technologies Inc. sued Defendant-Appellees, Dell, Inc., Lenovo, Inc., Sand Dune Ventures, Inc., Toshiba American Information Systems, Inc., Fujitsu America, Inc., Panasonic Corp. of North America, Apple Inc. (dismissed), HTC America, Inc., and Palm, Inc., as manufactures and/or sellers of laptop, tablet computers and handheld devices, for infringement of U.S. Patents No. 5,379,057 and No. 5,675,362, directed to “Portable Computer with Touch Screen and Computer System Employing Same.”
Claim 12 of the ‘057 patent, designated as representative, recited as follows, with emphasis added to the terms at issue on appeal:
12. A portable, keyboardless, computer comprising:
an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;
a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;
a processor coupled to said memory and said in-put/output device for executing said data collection application; and
an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said applica-tion generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries;and
a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.
“Memory for storing”
The district court held that the “memory for storing” clause requires that the memory is actually programmed or configured to store the data collection application.
Plaintiff-Appellant argued that that district court incorrectly included a “use” limitation in an apparatus claim, by requiring that the memory storing function “must” be performed. Typhoon urged the CAFC to consider that the claims are not method claims, and cited Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008) to state, “it is irrelevant if the function is actually performed by the device, if the device can be programmed or configured to perform the function.”
CAFC disagreed with Plaintiff-Appellant. Referencing Microprocessor case cited by Plaintiff-Appellant, CAFC stated the apparatus must be “capable” or performing the recited function, as provided, not “that it might be later modified to perform that function,” and found no error of law or fact in the district court’s construction.
“Processor for executing”
The district court, in reviewing the specification, held that the “processor for executing said data collection application” requires that “the recited function must be performed (namely, executing the application and the libraries to facilitate data collection operations).”
Again, Plaintiff-Appellant argued that the “processor for executing” term merely requires the device to have the capability of being programmed or configured to execute the data collection application.
CAFC found Plaintiff-Appellant’s position to be inconsistent with its position during prosecution, where it narrowed the claims to executing data collection application that work with functional libraries, and affirmed the district court’s construction.
“Operating in Conjunction”
Plaintiff-Appellant, again argued that the district court improperly injected a “use” requirement into the claim. The CAFC found no error in the district court’s construction that the term requires the device to be programmed or configured to perform the stated function.
The district court construed this term to mean “with-out a mechanically integrated keyboard.”
Plaintiff-Appellant argued that “keyboardless” is given a special meaning in the specification, such that the ordinary meaning “without a keyboard” does not apply. Plaintiff-Appellant also argued that the district court construed the claims with target devices in mind to demonstrate their non-infringement.
The CAFC did not agree with the Plaintiff-Appellant’s arguments, and affirmed the district court’s construction of the term “keyboardless.”
“Means for cross-referencing”
The district court held that the claim term “means for cross-referencing said responses with one of said libraries of said possible responses” is indefinite under 35 U.S.C. Section 112 ¶ 2, and thus found the means plus function claims invalid. Specifically, the district court held that the specification does not contain an “algorithm” adequate to provide structure for the “means for cross-referencing” function.
In reviewing this holding, the CAFC stated, “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.” Here, the CAFC found that the specification contained adequate algorithmic criteria to perform the computer-implemented function. The CAFC cited to Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323 (Fed. Cir. 2008), which stated that a patentee is allowed to express the procedural algorithm “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.”
In this case, Plaintiff-Appellant did not include any computer code for computer-implemented procedures. Instead, the procedures disclosed in the specification recites in prose. The CAFC found that this recitation in prose was sufficient for those persons of skill in computer programming to implement these steps. Therefore, CAFC reversed the district court’s ruling that “means for cross referencing” is indefinite and invalid.