Docket No. 2014-1392
NEWMAN (D), DYK, HUGHES
May 6, 2015
Brief Summary: DC grant of SJ to defendants that disputed patent is indefinite affirmed because “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” and the patent did not disclose an algorithm.
Summary: EON appealed DC grant of SJ to defendants that US 5,663,757 directed to a “local subscriber data processing station” that works with a TV to “interconnect various features of the television…such as ‘impulse purchase transactions with immediate payment’” is invalid as indefinite because it does not “disclose an algorithm providing structure to various computer-implemented means-plus-function elements.” During the time litigation was pending against the defendants, the ‘757 patent went through two reexaminations; the claims were amended in the first and amended and confirmed in the second. The defendants then moved for SJ of invalidity for indefiniteness, which was granted (eight “means” or “means for” terms were held invalid). The opinion explained that the grant of SJ is reviewed de novo using the DC standard (Ethicon, FC 1998), the ultimate conclusion of indefiniteness de novo (Eidos, FC 2015) and since the DC “made numerous findings of fact [and] the indefiniteness inquiry here is intertwined with claim construction”, the “subsidiary factual determinations [are reviewed] for clear error (Teva, US 2015; Nautilus, FC 2015). The parties agreed all the disputed terms were means-plus-function terms governed by § 112, para. 6, which the opinion explained “must satisfy the definiteness requirement of § 112, para. 2”, and also agreed that the functions claimed…are all performed by computer software”. The opinion explained “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself” (WMS Gaming, FC 1999; Aritstocrat Techs., FC 2008) and “EON does not dispute that the ‘757 patent discloses no algorithms.” But EON relied on the Katz exception (FC 2011) “that a standard microprocessor can serve as sufficient structure for ‘functions that can be achieved by any general purpose computer without special programming’” (“the functions claimed…are relatively simple to implement”). However, the opinion explained that this exception applies only in rare circumstances (Ergo, FC 2012), “[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor” and “[a]ll other computer-implemented functions require disclosure of an algorithm” (WMS Gaming and Alappat, FC 1994 (mainly a § 101 case that the opinion notes “has been superceded by Bilski…Nonetheless, WMS Gaming and Katz remain correctly decided.”) The FC concluded “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.” EON’s argument “that a microprocessor can serve as sufficient structure if a person of ordinary skill in the art could implement the software function” was dismissed as “meritless”. The DC grant of SJ was therefore affirmed.