Monday, April 09, 2012

Intuit prevails over Noah at CAFC

The conclusion:

Computer-implemented means-plus-function claims are indefinite unless the specification discloses an algo- rithm to perform the function associated with the limita- tion. When the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the speci- fication is treated as if it disclosed no algorithm. Because the ’435 patent’s specification discloses an algorithm for performing only one of the functions associated with the “access means” limitation, the limitation is indefinite. All of the asserted claims contain this limitation; the asserted claims are, therefore, invalid as indefinite.

with the indefiniteness finding affirming the special master:

The special master concluded that the “access means” limitation was indefinite, agreeing with Intuit that the specification failed to disclose an algorithm by which the financial accounting computer was programmed to perform the limitation’s function. Claim Construction R&R at 42–47.

**Of Intuit's argument of waiver:

“[P]resenting proposed claim constructions which al- ter claim scope for the first time on appeal invokes the doctrine of waiver as to the new claim constructions.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1296 (Fed. Cir. 2005) (citations omitted). Intuit argues that Noah’s contention that the structure used to perform the function associated with the “access means” limitation “includes an algorithm by which a passcode is issued to a user or agent, the passcode is entered by a user or agent, and the passcode is validated, and equivalents thereof” is new on appeal. Appellee’s Br. 18–19. Accordingly, Intuit asserts that Noah waived this argument. We disagree.

**Of indefiniteness

Whether a claim complies with the definiteness re- quirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction, which we review de novo.7 S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001) (citation omitted). Similarly, “[a] determination that a patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C § 112, paragraph 2, is a legal conclusion . . . that we review de novo.” Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1318 (Fed. Cir. 2003) (internal quotation omitted). Here, the disputed “access means” limitation qualifies as a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6.

The legal analysis:

Construction of a means-plus-function limitation in- cludes two steps. “First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs the function.” Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (internal citations omitted). On appeal, neither party disputes the function performed by the access means, so the inquiry on appeal is whether the specifica- tion adequately discloses a corresponding structure that performs the function associated with the “access means” limitation.

Aristocrat is cited:

In cases such as this one, involving a special purpose computer-implemented means-plus-function limitation, “this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).


The specifi- cation can express the 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 Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). Simply disclosing software, however, “without providing some detail about the means to accomplish the function[,] is not enough.” Id. at 1340–41 (citation omit- ted).


First, cases in which the specification discloses no algorithm; and second, cases in which the specification does disclose an algorithm but a defendant contends that disclosure is inadequate. Com- pare Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1383–85 (Fed. Cir. 2009) (no algorithm) with WMS Gam- ing, 184 F.3d at 1349 (algorithm).


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