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Archived updates for Monday, October 20, 2008

Another Computer Means-Plus-Function Claim Invalid for Failure to Disclose Algorithm

In Net Moneyin Inc. v. Verisign, Inc. (October 20, 2008) the Federal Circuit affirmed that claim language reciting "first bank computer including means for generating an authorization indicia . . ." was invalid under 35 U.S.C. § 112 ¶ 2 where the specification failed to disclose an algorithm for accomplishing that function on the illustrated computer.

According to that portion of the opinion by Circuit Judge Linn:

A patent applicant who employs means-plus-function language "must set forth in
the specification an adequate disclosure showing what is meant by that language.
If an applicant fails to set forth an adequate disclosure, the applicant has in
effect failed to particularly point out and distinctly claim the invention as
required by the second paragraph of section 112." In re Donaldson Co., 16 F.3d
1189, 1195 (Fed. Cir. 1994) (en banc). To avoid purely functional claiming in
cases involving computer-implemented inventions, we have "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). "Because general purpose
computers can be programmed to perform very different tasks in very different
ways, simply disclosing a computer as the structure designated to perform a
particular function does not limit the scope of the claim to ‘the corresponding
structure, material, or acts’ that perform the function, as required by section
112 paragraph 6." Id. "Thus, in a means-plus-function claim ‘in which the
disclosed structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the disclosed
algorithm.’" Id. (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999)). Consequently, a means-plus-function claim element for
which the only disclosed structure is a general purpose computer is invalid if
the specification fails to disclose an algorithm for performing the claimed
function. See id. at 1337-38.

There is no dispute in this case that the specification fails to disclose an algorithm by which a general purpose bank computer "generat[es] an authorization indicia." [FOOTNTE 3: At oral argument, counsel for NMI conceded that "[t]here is nothing in the written description that expressly states what is going on inside that bank computer." Oral Arg. at 20:10-20:15, available at] As a result, the district court correctly concluded that claims 1, 13, and 14 are indefinite under 35 U.S.C. § 112 ¶ 2. We therefore affirm that part of the judgment.

The decision reiterated that the test for anticipation by a single reference under 35 USC § 102 requires that the elements in a single reference be “arranged or combined in the same way as in the claim:”
[A]rranged as in the claim’ is readily understood in relation to claims drawn to things such as ingredients mixed in some claimed order. In such instances, a reference that discloses all of the claimed ingredients, but not in the order claimed, would not anticipate, because the reference would be missing any disclosure of the limitations of the claimed invention ‘arranged as in the claim.’ But the ‘arranged as in the claim’ requirement is not limited to such a narrow set of “order of limitations” claims. Rather, our precedent informs that the ‘arranged as in the claim’ requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. The test is thus more accurately understood to mean ‘arranged or combined in the same way as in the claim.’”
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