Particular And Distinct Claims (aka Indefiniteness) (Sec. 112(2/b) – Sec. 112(6/f))

  • Invalid If Means-Plus-Function Claim Element Without Disclosure Of Corresponding Structure: “If one employs means-plus-function language in a claim, one 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 (Fed. Cir. 02/14/94) (en banc) (Sec. 112(6/f) applies to ex parte USPTO examination.) “To satisfy the definiteness requirement, a means-plus-function claim requires sufficient disclosure of the underlying structure. That task lies with the patentee.” Alfred E. Mann Foundation (Fed. Cir. 11/18/16) (2-1) (aff’g bench trial finding of indefiniteness, but only as to two of three claims trial court found indefinite, reciting “means for generating data indicative of the audio signal”). A means-plus-function element with arguably no linked and specific corresponding structure in the written description is the best candidate for invalidity for lack of particular and distinct claims. Cf. Diebold Nixdorf (Fed. Cir. 08/15/18) (rev’g ITC; term “cheque standby unit” is a means-plus-function term, and Spec. fails to describe any structure corresponding to the claim-recited functions for this unit, rendering claims indefinite.);  Media Rights (Fed. Cir. 09/04/15) (aff’g judgment on the pleadings; no disclosure of structure, specifically an algorithm, for performing two of the four functions of claim-recited “compliance mechanism”); Williamson (Fed. Cir. 06/16/15) (panel part) (aff’g “indefiniteness”; “specification does not set forth an algorithm for performing the claimed functions”); Robert Bosch (Fed. Cir. 10/14/14) (aff’g invalidity for indefiniteness where “program recognition device” and “program loading device” triggered Sec. 112(6/f) and lacked corresponding structure in Spec., despite expert declaration); Function Media (Fed. Cir. 02/13/13) (aff’g Summ. J. of indefiniteness; patent includes no disclosure of how the program performs the transmitting function).
    • Disclosing That Function Can Be Performed In Known Or Conventional Manner Is Insufficient: E.g., claim reciting “control means for automatically operating said valving” was invalid where only references in disclosure to “control means” were “a box labeled ‘Control’ [in drawing] and a statement that the regeneration process of the invention ‘may be controlled automatically by known differential pressure, valving and control equipment.’” “A bare statement that known techniques or methods can be used does not disclose structure.” Biomedino (Fed. Cir. 06/18/07); Triton Tech (Fed. Cir. 06/13/14) (aff’g Summ. J.; Spec. stated that the claim-recited numerical integration function is performed in a “conventional manner”). But see Enfish (Fed. Cir. 05/12/16) (that disclosed “algorithm relies, in part, on techniques known to a person of skill in the art does not render the composite algorithm insufficient”); Elcommerce.com (Fed. Cir. 02/24/14) (2-1) (vacating Summ. J. of invalidity; Spec. descriptions of acts and functions performed was sufficient where uncontested that person of skill in the art would have understood how to implement without undue experimentation), vacated (Fed. Cir. 06/06/14).
    • Disclosing “Black Box” Or Generic Structural Term Insufficient If Does Not Connote Specific, Well-Known Structure: Although sometimes sufficient to recite in Spec. standard electric component, “reciting a generic term for an electronic component is insufficient if an ordinary artisan would not associate the claimed component with a specific, well-known structure.” Lufthansa (Fed. Cir. 10/19/17) (non-precedential) (rev’g bench trial finding of definiteness, for “control means” claim element: Spec. “does not call out a specific, well-known component to perform the claimed function. Instead, the ‘control means’ refers to a nebulous set of logic functions within a black box that also performs other functions.” “Lufthansa’s shifting approach to claim construction underscores how, without a specific corresponding structure, the ‘control means’ limitation becomes whatever structure the patentee conveniently identifies during litigation.”). See Ergo Licensing (Fed. Cir. 03/26/12) (disclosure of control device with memory is insufficient structure to support claimed means for “controlling the adjusting means,” where expert showed that there were multiple different types of control devices in the art).
    • Must Provide Reasonable Certainty As To Corresponding Structure To Claim-Recited Function: “It may be that a variety of devices can act as the ‘control means,’ but the specification does not explain which devices are claimed and which are not. Thus, an ordinary artisan could not ascertain the scope of the claim with reasonable certainty.” Lufthansa (Fed. Cir. 10/19/17) (non-precedential). “In order for a claim to meet the particularity requirement of ¶ 2, the corresponding structure(s) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation. Otherwise, one does not know what the claim means.” Atmel (Fed. Cir. 12/28/99).
    • Must Clearly Link Or Associate The Structure To The Claim-Recited Function: “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.” Cloud Farm (Fed. Cir. 01/09/17) (non-precedential) (aff’g indefiniteness for lack of corresponding structure in Spec. for three “means plus function” elements).
  • That Spec. Enables Artisan To Perform Claim-Recited Function May Not Disclose Required Corresponding Structure: Williamson (Fed. Cir. 06/16/15) (en banc portion) (“the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.”); Blackboard (Fed. Cir. 07/27/09) (“That argument, however, conflates the definiteness requirement of section 112, paragraphs 2 and 6, and the enablement requirement of section 112, paragraph 1. The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure’ to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.”); Lufthansa (Fed. Cir. 10/19/17) (non-precedential) (rev’g bench trial finding of definiteness, for “control means” claim element: “It may be that a variety of devices can act as the ‘control means,’ but the specification does not explain which devices are claimed and which are not. Thus, an ordinary artisan could not ascertain the scope of the claim with reasonable certainty.”)
  • Indefiniteness Based On “Means” Element: Lufthansa (Fed. Cir. 10/19/17) (non-precedential) (rev’g bench trial finding of definiteness, for “control means” claim element); Twin Peaks (Fed. Cir. 05/26/17) (non-precedential) (aff’g indefiniteness of “means for” and “mechanism for” elements; patent owner “pieces together disparate portions of the specification to conjure up a corresponding structure.”); Cloud Farm (Fed. Cir. 01/09/17) (non-precedential) (aff’g lack of corresponding structure for three “means plus function” elements); Alfred E. Mann Foundation (Fed. Cir. 11/18/16) (2-1) (claims indefinite because Spec. did “not disclose where the logarithmic conversion function takes place and because the logarithmic conversion function could be implemented through multiple logarithmic algorithms, none of which the specification describes”; but another claim’s “means plus function” element is not indefinite); Default Proof Credit Card (Fed. Cir. 06/16/05) (claims are invalid for indefiniteness because the Spec. includes no structure corresponding to a means plus function limitation); cf. Rembrandt Data (Fed. Cir. 04/18/11) (rev’g Summ. J. of indefiniteness because expert testimony created genuine issue of material fact on whether patent disclosed algorithm for performing the recited function); Lighting Ballast I (Fed. Cir. 01/02/13) (invalid for Spec. failure to refer to any structure capable of performing the recited function of: “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals,” rejecting expert testimony”) (non-precedential), vacated en banc (Fed. Cir. 03/15/13) (to revisit Cybor), reinstated (Fed. Cir. 02/21/14), vacated ivo Teva (U.S. 01/26/2015), on remand Lighting Ballast III (Fed. Cir. 06/23/15) (aff’g trial court’s claim construction that claim term did not trigger Sec. 112(6/f) and claim is not indefinite).
  • Programmed Processors And Algorithms: Compare Aristocrat Tech. (Fed. Cir. 02/22/08) (non-precedential) (rev’g Summ. J. indefiniteness; remanding for fact determinations on level of skill in art and whether sufficient corresponding structures and algorithms were disclosed to one of ordinary skill) with Aristocrat Tech (Fed. Cir. 03/28/08) (aff’g Summ. J. indefiniteness where sole Spec. disclosure of “control means” was that persons of ordinary skill would know how “to introduce the methodology on any standard microprocessor base [sic] gaming machine by means of appropriate programming.” long discussion of WMS Gaming line of case law); Encyclopaedia Britannica (Fed. Cir. 12/04/09) (non-precedential) (Spec. must disclose the algorithm that performed the recited function no matter how simple that function is); Brown (Fed. Cir. 05/07/10) (claim indefinite for lack of disclosed algorithm corresponding to “means for processing” even though Examiner suggested the claim language) (non-precedential); Dealertrack (Fed. Cir. 01/20/12) (“the appropriate structure must include the algorithms disclosed in the specification that ‘implement[] and control[] credit application processing and routing.’”, but where Spec. discloses alternative algorithms, only one (or its equivalent) need be met by accused structure).
    • Clear and Convincing Evidence: A lack of disclosure of structure adequate to perform recited function must be shown by clear and convincing evidence. Chicago Bd. II (Fed. Cir. 04/07/14) (rev’g Summ. J. of indefiniteness, based on sufficient disclosure of algorithm for computer); TecSec (Fed. Cir. 10/02/13) (sufficient disclosure of algorithms); Creative Integrated (Fed. Cir. 06/03/13) (non-precedential); Aerotel (Fed. Cir. 07/26/11) (non-precedential).
    • Function Performed By Computer Or Processor: Failure to disclose an algorithm (i.e., a step-by-step procedure) practiced by software renders claim indefinite. Cloud Farm (Fed. Cir. 01/09/17) (non-precedential) (“Instead of offering the algorithm itself, this table merely offers the output of the algorithm. Nowhere in the patent offers a step-by-step procedure of how to arrive at the outputs disclosed in the table. In other words, the patent offers the ends but not the means, which is not sufficient for structure.”); Advanced Ground Info. (Fed. Cir. 07/28/16) (aff’g indefiniteness; insufficient structure disclosed for “signal generator” where disclosed general-purpose computer and suggested the “medium through which the symbols are generated,” namely a map database and database of locations); Net MoneyIn (Fed. Cir. 10/20/08) (“[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.”) “Simply disclosing a black box that performs the recited function is not a sufficient explanation of the algorithm required to render the means-plus-function term definite.” Augme Tech. (Fed. Cir. 06/20/14) (disclosing inputs to and outputs from “code assembler instructions” does not disclose an algorithm for how the claimed assembly function is performed; aff’g Summ. J. of indefiniteness); Triton Tech (Fed. Cir. 06/13/14) (aff’g Summ. J. of indefiniteness; multiple different algorithms were known for performing the numerical integration function, but Spec. disclosed no particular algorithm, instead saying function is performed in a “conventional manner”); Ibormeith (Fed. Cir. 10/22/13) (aff’g Summ. J. of indefiniteness: “A description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.”); HTC IPCom I (Fed. Cir. 01/30/12) (“The necessity of an algorithm has been well established at least since WMS Gaming, a 1999 case.”); Finisar (Fed. Cir. 04/18/08) (may describe the system “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”); Dealertrack (Fed. Cir. 01/20/12) (dependent claims that added function to be performed by the means element (“central processing means computer program … further provides for tracking pending credit applications”), indefinite because no algorithm disclosed for that function). A description that merely recites the function without describing how it is achieved, does not provide sufficient “structure.” Blackboard (Fed. Cir. 07/27/09); accord Eon (Fed. Cir. 05/06/15) (aff’g Summ. J. of invalidity; WMS Gaming correct despite reliance on since-overruled Alappat; “the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.”); com (Fed. Cir. 06/15/11) (non-precedential); In re Aoyama (Fed. Cir. 08/29/11) (aff’g PTO indefiniteness rejection where flowchart (and description) “fails to describe, even at a high level, how a computer could be programmed to produce the structure that provides the results described in the boxes.”); cf. Typhoon Touch (Fed. Cir. 11/04/11) (rev’g invalidity ruling on this ground, “it suffices if the specification recites in prose the algorithm to be implemented by the programmer”; “means for cross-referencing” not indefinite where Spec. discloses that the function “entails the steps of data entry, then storage of data in memory, then the search in a library of responses, then the determination if a match exists, and then reporting action if a match is found,” and “no evidence that a programmer of ordinary skill in the field would not understand how to implement this function.”); HTC IPCom I (Fed. Cir. 01/30/12) (Spec. need not literally disclose the corresponding structure (here a processor and transceiver) if person skilled in the art would understand that the disclosed device “would have to contain” those structures); EPlus (Fed. Cir. 11/21/12) (“There is no instruction for using a particular piece of hardware, employing a specific source code, or following a particular algorithm. There is therefore nothing in the specification to help cabin the scope of the functional language in the means for processing element.”)
    • Processor And Transceiver = General-Purpose Computer: HTC IPCom I (Fed. Cir. 01/30/12) (dictum; because argument waived) (“The processor and transceiver amount to nothing more than a general-purpose computer,” and thus an algorithm needed to be disclosed as well); see IPCom (HTC II (IPCom)) (Fed. Cir. 07/07/17) (faulting PTAB for not identifying corresponding structure in Spec.).
    • But, Basic Functions Of A General-Purpose Computer Do Not Need Disclosure Of Special Structure/Algorithm: a “means for” “processing,” or “receiving,” or “storing” in effect recites a general-purpose computer, not “specific functions” requiring “special programming,” i.e., “a particular function not disclosed simply by a reference to a general purpose computer;” WMS Gaming and Aristocrat “involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions.” In re Katz (Fed. Cir. 02/18/11) (but rejecting other claims reciting special functions, for indefiniteness); cf. Eon (Fed. Cir. 05/06/15) (aff’g Summ. J. of invalidity; Katz’s “narrow exception” to “the algorithm rule” does not apply to any functions other than basic functions of a computer: “‘special programming’ does not denote a level of complexity …; ‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer”); Ergo Licensing (Fed. Cir. 03/26/12) (Katz “a narrow exception”); Noah Sys. (Fed. Cir. 04/09/12)) (“The acts of ‘entering’ ‘deleting’ ‘reviewing’ and ‘adjusting’ financial transaction data . . . are specialized functions which cannot be accomplished absent specialized programming.”); Driessen (Fed. Cir. 02/10/16) (non-precedential) (aff’g indefiniteness judgment: no disclosed structure for function of “storing and retrieving a record on or in a physical medium;” general purpose computer insufficient).
    • Only If Spec. Discloses Some Algorithm For Performing Entire Claimed Function Need Court Consider Person Of Skill In The Art?: Court is “required to consider patentee’s argument and evidence regarding what one skilled in the art would understand from the specification before determining whether the claim was indefinite,” only if patent discloses some algorithm for performing the entirety of the claim-recited function. Noah Sys. (Fed. Cir. 04/09/12) (aff’g Summ. J. of invalidity; algorithm disclosed was for performing only part of the function so no need to consider expert testimony); accord Eon (Fed. Cir. 05/06/15). Contra ElCommerce.com (Fed. Cir. 02/24/14) (2-1) (vacating Summ. J. of invalidity; trial court erred by not requiring expert testimony or other evidence of whether person of skill in the art would have found sufficient structure and acts in the Spec.), vacated (Fed. Cir. 06/06/14).
  • Only Claim For “A Combination” May Use Sec. 112(6/f) Element: “An element in a claim for a combination may be expressed as a means ….” See In re Hyatt (Fed. Cir. 06/03/83) (Rich, J.) (claim with single element, which element is a means element, is invalid under Sec. 112(1/a) not Sec. 112(2/b)) (note: this invalidity bucket is questionable).
  • Conceding That Term Does Not Trigger Sec. 112(6/f) May Concede Not Purely Functional: Cox Commc’ns. (Fed. Cir. 09/23/16) (rev’g Summ. J. of indefiniteness based on term “processing system” in method claims: by admitting that “processing system” does not trigger Sec. 112(6/f), challenger admitted not “pure functional claiming”). [Consider Seeking S. Ct. Review.]
    • TIPS: