Saturday, November 05, 2011

CAFC opines on meaning of "algorithm" in Typhoon case

Judge Newman wrote the opinion in Typhoon v. Dell, which summarized the mixed decision:

The district court’s rulings concerning the claim terms “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless” are affirmed, and on these rulings the judgment of noninfringement is affirmed. We reverse the ruling that the claim term “means for cross- referencing” is indefinite, and reverse the summary judgment of invalidity on the ground of claim indefiniteness.

Within the case, Typhoon obtained reversal of "invalidity through indefiniteness" but lost on noninfringement. Of the indefiniteness matter:

The usage “algorithm” in computer systems has broad meaning, for it encompasses “in essence a series of instructions for the computer to follow,” In re Waldbaum, 457 F.2d 997, 998 (CCPA 1972), whether in mathematical formula, or a word description of the procedure to be implemented by a suitably programmed computer. The definition in Webster's New Collegiate Dictionary (1976) is quoted in In re Freeman, 573 F.2d 1237, 1245 (CCPA 1978): “a step-by-step procedure for solving a problem or accomplishing some end.”

In Freeman the court referred to “the term ‘algorithm’ as a term of art in its broad sense, i.e., to identify a step-by-step procedure for accomplishing a given result.” The court observed that “[t]he preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.’ C. Sippl & C. Sippl, Computer Dictionary and Handbook (1972).” Id. at 1246.

Precedent and practice permit a patentee to express that 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.” Finisar, 523 F.3d at 1340. In Finisar the court ex- plained that the patent need only disclose sufficient structure for a person of skill in the field to provide an operative software program for the specified function. Id. “The amount of detail required to be included in claims depends on the particular invention and the prior art.” Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985). In turn, the amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention.

For computer-implemented procedures, the computer code is not required to be included in the patent specification. See Aristocrat Techs., 521 F.3d at 1338 (the patentee is not “required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. §112 ¶ 6”). A description of the function in words may “disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under §112, ¶ 6.” Finisar, 523 F.3d at 1340.

We agree with Typhoon that the term “means for cross- referencing” is supported by the “structure, materials, or acts” in the specification.

Within the decision, relating to a complaint by patentee-plaintiff on the subject of noninfringement:

Typhoon criticizes the district court for construing the claims in order to target the accused devices and demonstrate their non-infringement. It is not inappropriate for a court to consider the accused devices when construing claim terms, for the purpose of “claim construction” is to resolve issues of infringement. See Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed. Cir. 1999) (“Although the construction of the claim is independent of the device charged with infringement, it is convenient for the court to concentrate on those aspects of the claim whose relation to the accused device is in dispute.”); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (“In ‘claim construction’ the words of the claims are construed independent of the accused product . . . . Of course the particular accused product (or process) is kept in mind, for it is efficient to focus on the construction of only the disputed elements or limitations of the claims.”)


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