Tuesday, May 30, 2017

CAFC affirms ND Cal's finding of indefiniteness in Twin Peaks v. IBM

The CAFC affirmed ND Cal in Twin Peaks:

Twin Peaks Software Inc. (“Twin Peaks”) appeals
from a judgment of the United States District Court for
the Northern District of California that claims 1 and 4 of
U.S. Patent 7,418,439 (“the ’439 patent”) are invalid as
indefinite following a claim construction order by the
district court. See Twin Peaks Software Inc. v. IBM Corp.,
No. 3:14-cv-03933-JST, 2016 WL 1409748 (N.D. Cal. Apr.
11, 2016) (“Order”). Because the district court did not err
in its claim construction or in concluding that the challenged
claims are invalid as indefinite, we affirm.

IBM's argument:

IBM responds that, although Twin Peaks refers to
multiple columns and figures of the ’439 patent, it fails to
identify any algorithm that is clearly linked or associated
with the “means for mounting” function, and that all of
the descriptions identified by Twin Peaks disclose the
outcome of, or what results from, the MFS mounting
function. IBM also contends that Twin Peaks is improperly
relying on the knowledge of one of ordinary skill in
the art to “fill in gaps in disclosure.” Id. at 35–36.

The CAFC noted:

the “means for mounting” limitation is circularly
described by referring to the very term “mount” and the
results of various “mount” operations, rather than by
disclosing the identity of the “means for mounting.”
Twin Peaks appears to argue that the “MFS Mount
Protocol” involves multiple regular mount operations
known in the art, but even assuming arguendo that that
contention is accepted, the specification does not describe
to what extent the MFS mount protocol involves the
regular mount operations or to what extent the “MFS
mount” operation is different from the regular “mount”
operation. See Biomedino, 490 F.3d at 953 (holding that
“a bare statement that known techniques or methods can
be used does not disclose structure”); Med. Instrumentation
& Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1211 (Fed. Cir. 2003) (noting “[t]he requirement that a
particular structure be clearly linked with the claimed
function in order to qualify as corresponding structure”).

Of the "ordinary skill" argument:

Lastly, Twin Peaks argues that a person of ordinary
skill in the art reading the specification would understand
what structure corresponds to the “means for mounting”
limitation and could implement it because “some structure
is disclosed” and therefore, omitting certain details is
“of no significance.” Appellant’s Br. 44. Twin Peaks cites
our case law holding that, in some cases, disclosure of
“some structure” can be sufficient, e.g., Atmel Corp. v.
Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir.
1999), as supporting its proposition. However, the “some
structure” in the specification that would be sufficient still
should be “some structure corresponding to the means”
recited in the claims “so that one can readily ascertain
what the claim means and comply with the particularity
requirement of ¶ 2.” Atmel, 198 F.3d at 1382 (emphasis
added). Indeed, the “interpretation of what is disclosed
must be made in light of the knowledge of one skilled in
the art,” but “the understanding of one skilled in the art
in no way relieves the patentee of adequately disclosing
sufficient structure in the specification.” Id. at 1380; see
also Biomedino, 490 F.3d at 952. Here, as discussed
above, other than the post hoc synthesis of what the
“means for mounting” limitation corresponds to as proposed
by Twin Peaks, the ’439 patent specification itself
does not adequately disclose the corresponding structure
of the “means for mounting” limitation, and that inadequate
disclosure cannot be cured simply by relying on the
knowledge of a person skilled in the art. Biomedino, 490
F.3d at 953 (“The inquiry is whether one of skill in the art
would understand the specification itself to disclose a
structure, not simply whether that person would be
capable of implementing a structure.” (citation omitted)).
We therefore conclude that the “means for mounting”
limitation of claim 1 is indefinite and that the district
court did not err in so concluding.

**Separately, from Blawgsearch on 30 May 2017:


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