Ibormeith IP, LLC v. Mercedes-Benz USA, LLC and Daimler AG

Docket No. 2013-1007

October 22, 2013

Brief summary: DC decision that “computational means” is indefinite was affirmed because “algorithm whose terms are defined and understandable” was not provided by the specification.

Summary: Ibormeith appealed DC grant of SJ to Mercedes that the claim term “computational means” of US Pat. No. 6,313,749 relating to systems for monitoring a vehicle driver’s sleepiness is indefinite. The panel explained that “[t]o comply with section 112(f), the specification of Ibormeith’s patent has to disclose a structure for performing the functions claimed in the ‘computational means’ limitation, the statute providing that the claim limitation covers that disclosed structure and its equivalents.” If no such structure is disclosed, the term is indefinite (Typhoon, FC 2011; In re Freeman, CCPA 1978). The corresponding structure “need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan; but it must be sufficiently defined to render the bounds of the claim…understandable by the implementer” (AllVoice, FC 2007). Ibormeith argued that the corresponding structure is an algorithm that is described in three portions of the specification. Table 10 of the ‘749 patent was found to disclose “what looks like a mathematical equation” but also to state that “the tables ‘are generally self-explanatory and will not otherwise be discussed.’” Ibormeith’s expert testified that he believed “the patent authors meant for Table 10 to be used as a template for constructing a specific formula(s) or equation(s) to compute sleepiness” and “that the ’749 patent requires one who implements the drowsiness detection system to determine which factors to use in the algorithm, how to obtain them, how to weight them (for example, by multiplication or addition), how to combine them, and when to issue the warning.” The panel took “Ibormeith and its expert at their word in insisting on the breadth, rather than specificity, of what Table 10 discloses”, “a binding admission” which was required to show infringement by Mercedes. However, the court concluded, “that position…fails in the necessary attempt to steer a course that permits proof of infringement yet avoids invalidity” because “Table 10 leaves the disclosure without an algorithm whose terms are defined and understandable” (“As recognized by Mercedes’s expert Dr. Knipling, a person of ordinary skill in the art ‘would need to devise his or her own method for determining driver drowsiness based on the factors generally disclosed….’”) Accordingly, the DC decision was affirmed.

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