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Archived updates for Tuesday, June 21, 2005

Dispenser Block Insufficient to Support "Dispensing Means"

In Default Proof Credit Card System v. Home Depot (Fed. Cir. June 16, 2005) the court concluded that claim 1 of U.S. Patent No. 6,405,182 is invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, ¶ 2 because it did not disclose structure corresponding to the "means for dispensing at least one debit card."

According to the Federal Circuit, the only structure in the ’182 patent associated with the function of distributing debit cards was the "dispenser" shown in Figure 1 (above). The specification described the "dispenser" as "loaded with three or more stacks of debit cards with a digital storage number wherein a unique identifying serial number has been recorded." However, the specification also disclosed that the dispenser required some type of human intervention:
Important to this appeal, the specification teaches that the "[d]ispenser will [sic] the merchant or the entity or place selling the card, and an issuer will be the entity or financial institution issuing the card. Dispenser 40 is loaded with three or more stacks of debit cards with a digital storage number 46 wherein a unique identifying serial number has been recorded, and identifies [sic] 48."
The court noted that Default Proof did not argue that the term "dispenser" constitutes the structure corresponding to the dispensing means. Instead, Default Proof merely asserted that "certain specific parts" of the POS terminal correspond to the distributing function shown in Figure 2. But the court was not persuaded:

This argument fails for two reasons. First, the specification fails to clearly
link the POS terminal, or any part thereof, to the distributing function.
Second, the specification fails to describe any parts of the POS terminal
capable of dispensing debit cards. . .

Because the evidence intrinsic to the ’182 patent clearly establishes that the POS terminal does not constitute corresponding structure for the "means for dispensing," specific parts of the POS terminal also do not constitute such structure. Default Proof’s arguments that the structure corresponding to the "means for dispensing" can entail human (or "merchant") participation or a human being manually operating an apparatus, are equally misplaced. Given that a human being cannot constitute a "means," see In re Prater, 415 F.2d 1393, 1398 (CCPA 1969), Default Proof’s arguments merely beg the question of what structure the human being operates to perform the function of distributing the prepaid debit cards. . . .

The district court expressly considered Default Proof's expert's testimony in determining "whether a person of ordinary skill in the relevant art would understand that a corresponding structure [to the ‘means for dispensing’] is disclosed in the specification." Recognizing, however, that it is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent, the court chose not to rely on those portions of Gafford’s testimony that were either unsupported or contradicted by the express language of the written description. . . .

In sum, while it is true that the patentee need not disclose details of
structures well known in the art, the specification must nonetheless disclose some structure. Stated differently, the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification. Because the specification of the ’182 patent discloses no structure corresponding to the claimed function of the "means for dispensing," Default Proof cannot use the declaration of its expert to rewrite the patent’s specification. We thus hold claim 1 invalid as indefinite. As we have stated, "[t]he primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent, so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe."
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