Computer Implemented Means-Plus-Function Terms Must be Supported by an Algorithm in the Specification
Rob Raheja | January 14, 2016
Eon Corp. IP Holdings LLC v. AT&T Mobility LLC
May 6, 2015
Before Prost, Newman and Bryson. Opinion by Prost.
The Federal Circuit held that the Katz exception did not apply. According to the Federal Circuit, a microprocessor or general purpose computer, under the Katz exception, lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm. Because Katz exception did not apply, the Federal Circuit found the claims indefinite because the disclosure of a microprocessor alone in the specification did not provide sufficient structure to the means-plus-functions terms at issue
EON Corp. IP Holdings LLC (“EON”) is an owner of U.S. Patent No. 5,663,757 (“’757 patent”). The ‘757 patent is directed to software provided in a “local subscriber data processing station” that operates in tandem with a television to interconnect various interactive features of the television. The software permits actions including “impulse purchase transactions with immediate payment, audience participation voting, and sorting television programs by theme.”
EON sued several defendants for infringement of ‘757 patent in the United States District Court for the District of Delaware. The district court granted the defendants’ motion for summary judgment, holding that all claims of the ‘757 patent were invalid as indefinite. In particular, the district court found that the specification failed to disclose a corresponding structure for the following eight computer-implemented means-plus-function elements:
1. “means under control of said replaceable software means for indicating acknowledging shipment of an order from a remote station” (Claim 7);
2. “means controlled by replaceable software means operable with said operation control system for . . . reconfiguring the operating modes by adding or changing features and introducing new menus” (Claims 1-6, 8-10);
3. “means responsive to said self contained software for establishing a mode of operations for selection of one of a plurality of authorized television program channels” (Claim 8);
4. “means establishing a first menu directed to different interactively selectable program theme subsets available from said authorized television program channels” (Claim 8);
5. “means for causing selected themes to automatically display a second menu” (Claim 8);
6. “means controlled by replaceable software means operable with said operation control system for establishing and controlling a mode of operation that records historical operating data of the local subscriber’s data processing station” (Claim 9);
7. “means controlled by replaceable software means operable with said operat[ion] control system for establishing and controlling fiscal transactions with a further local station” (Claim 10); and
8. “means for establishing an accounting mode of operation for maintaining and reporting fiscal transactions incurred in the operation of the local subscriber’s data processing station” (Claim 10).
EON appealed to the Federal Circuit. The parties agreed that the functions claimed in the means-plus-function terms were all performed by computer software.
In WMS Gaming, the Federal Circuit held that “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself. In Aristocrat, the Federal Circuit stated that “[i]n cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” However, in In re Katz, the Federal Circuit created a “narrow” exception to the algorithm disclosure requirement, holding that a “standard microprocessor can serve as a sufficient structure for functions that can be achieved by any general purpose computer without special programming.” In Katz, the Federal Circuit stated that claim terms involving basic “processing,” “receiving,” and “storing” functions were not necessarily indefinite because a general purpose computer need not” be specially programmed to perform the recited function.
EON did not dispute that the ‘757 patent specification failed to disclose an algorithm and instead only discloses a microprocessor. EON’s position was that, under Katz, the disclosure of a general purpose computer is sufficient structure to meet the requirements of 35 U.S.C. § 112 ¶ 6 if a person of ordinary skill in the art would understand that the performance of that function to require no more than routine, well established and relatively simple programming using the general purpose computer. That is, EON asserted that claimed functions fell within the Katz exception because “they are relatively simple to implement” and do not require “special programming.”
The Federal Circuit disagreed with the EON’s position. According to the Federal Circuit, “special programing” does not denote a level of complexity; rather, as originally described in Katz, “special programming” includes any functionality that is not “coextensive” with a microprocessor. Examples of coextensive functions are basic functions such as “receiving” data, “storing” data and “processing” data that can be achieved by any general purpose computer without special programming. A microprocessor or general purpose computer, according to the Federal Circuit, lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.
The Federal circuit further stated that “[t]he disclosure of structure under 35 U.S.C.S. § 112, ¶ 6 serves the purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. A general purpose computer is flexible—it can do anything it is programmed to do. Therefore, the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and avoid pure functional claiming. As such, when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.” Importantly, the Federal Circuit pointed out that, where no algorithm is disclosed to satisfy the requirement of a corresponding structure under 35 U.S.C. § 112, ¶ 6, the knowledge of a person of ordinary skill in the art “plays no role whatsoever in determining whether an algorithm must be disclosed” in the specification and is only implicated when the defendant contends that such a disclosure is inadequate.
Because EON did not contend that the terms at issue recite functions that are coextensive with those of a microprocessor, and its expert testified that a person skilled in the art would need to consult algorithms outside the specification to implement the claimed functions, the Federal Circuit found that the disclosure of a microprocessor alone did not provide sufficient structure to the means-plus-functions terms at issue. Therefore, the Federal Circuit found the claims indefinite.
As a general rule, an algorithm must always be disclosed in the specification if means-plus-function terms are used to recite software functions since the Katz exception only applies to “basic functions” of a computer and the distinction between the “basic functions” and “complex functions” is not clearly defined by the court.