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Federal Circuit Clarifies Algorithm Requirements for Means-plus-function Claim Terms
Practical Law Legal Update 4-518-8636 (Approx. 4 pages)
Federal Circuit Clarifies Algorithm Requirements for Means-plus-function Claim Terms
by PLC Intellectual Property & Technology
| Published on 09 Apr 2012 • USA (National/Federal) |
In Noah Systems, Inc., v. Intuit Inc., the US Court of Appeals for the Federal Circuit clarified the standard for evaluating computer-implemented means-plus-function claims in a patent having a specification that discloses an algorithm that only accomplishes one of multiple identifiable functions performed by the claimed limitation.
Key Litigated Issues
The key issue before the US Court of Appeals for the Federal Circuit in Noah Systems, Inc., v. Intuit Inc. was whether the plaintiff's patent was indefinite under Section 112, paragraphs 2 and 6 of the Patent Act because it failed to disclose an algorithm for each of the functions associated with the claimed "access means" limitation.
Background
Noah Systems, Inc. sued Intuit Inc. for infringing a patent related to an automated financial accounting system. The system allows a business or individual to connect to another company's computers so that information regarding financial transactions can be transmitted between them. The automated accounting system includes a financial accounting computer, a financial transaction computer, a communications means and an access means. Noah asserted that Intuit's products infringed certain claims of its patent. The parties ultimately agreed that:
- Noah's patent claims contain an "access means" limitation.
- This is a means-plus-function limitation performed by a processor.
- The function performed by the "access means" is providing access to a file on the first entity's financial accounting computer so that the second entity can enter, delete, review, adjust or process data.
Following a Markman hearing to determine what structure performed this function, a court appointed special master found that the access means limitation was indefinite because the specification failed to disclose an algorithm showing how the financial accounting computer was programmed to perform this function. The US District Court for the Western District of Pennsylvania adopted the special master's decision.
Intuit then filed a Motion for Summary Judgment of Invalidity. Noah argued that because this case involves the sufficiency of a disclosed algorithm, not the total absence of disclosure, Intuit could not establish indefiniteness without first presenting evidence of how one skilled in the art would view the specification. The special master ruled that the court did not have to consider expert testimony because Noah's specification disclosed no algorithm and no structure. The special master recommended granting Intuit's motion, which the district court did on January 24, 2011.
Outcome
In its April 9, 2012 decision, the Federal Circuit affirmed the district court's decision that the access means limitation was indefinite, rendering the asserted claims containing this limitation invalid as indefinite.
Computer Implemented Means-plus-function Claim Limitations Require an Algorithm
The Federal Circuit held that Noah's patent was indefinite because it failed to disclose an algorithm for performing all of its claimed functions. Relying on its own precedent, the Federal Circuit stated that means-plus-function claim limitations under Section 112, paragraph 6 of the Patent Act must satisfy the definiteness requirements of Section 112 paragraph 2. The Federal Circuit reiterated that this standard requires that a person of ordinary skill in the art be able to recognize the structure in the specification and associate it with the corresponding function in the claim. In a case involving a computer-implemented means-plus-function limitation, the patent specification must disclose an algorithm for performing each of the claimed functions. For a general discussion of algorithm requirements on computer implemented means-plus-function claims, see Legal Update, Federal Circuit Addresses Computer-implemented Means-plus-function Claim Terms.
The Federal Circuit found that the patent at issue involves a means-plus-function limitation with two distinct functional components:
- Providing access to the financial accounting computer's file.
- After access is provided, enabling the performance of the specified operations (entering, deleting, reviewing, adjusting and processing the data inputs).
The Federal Circuit agreed that the patent specification had disclosed an algorithm for providing access to the financial accounting computer's file, but found that it did not disclose an algorithm for the second of these functional components.
Cases Involving Special Purpose Computer-implemented Means-plus-functions Claims
The Federal Circuit also rejected Noah's argument that the district court erred by granting Intuit's motion for summary judgment of invalidity without requiring expert testimony on how one of ordinary skill in the art would view the sufficiency of the specification disclosure. The Federal Circuit divides cases regarding special purpose computer-implemented means-plus-functions claims into two categories:
- Cases where the specification discloses an algorithm but a defendant contends that the disclosure is inadequate.
- Cases where the specification does not disclose an algorithm.
In the first category of cases, expert testimony can be used to show the sufficiency of a specification disclosure. However, in the second category of cases an expert's testimony about how a claim would be understood by one of ordinary skill in the art cannot correct the total absence of structure from the specification. The Federal Circuit held that when a disclosed algorithm supports some, but not all, of the functions associated with a means-plus-function limitation, courts must analyze the specification as if no algorithm had been disclosed.
Because the specification in this case disclosed an algorithm that supported one, but not all of the functions, it falls into the second category of cases. Therefore, the Federal Circuit affirmed the district court's decision and held that the district court did not err when it refused to allow expert testimony on what one skilled in the art would understand from the specification before it construed the "access means" limitation as indefinite.
Practical Implications
Applicants using computer-implemented means-plus-function claim terms must disclose in the specification an algorithm to perform each of the functions associated with the means. If the specification discloses an algorithm that accomplishes only one of multiple identifiable functions performed by a means-plus-function limitation, courts will treat the specification as if it did not disclose an algorithm. In such cases, evidence on what one skilled in the art would understand from the specification will not be enough to meet the statutory definiteness requirement.