Another Means-Plus-Function Federal Circuit Decision for Computer System Patent Claims
In Encyclopaedia Britannica v. Alpine Electronics, Inc. (Fed. Cir. 2009), the Federal Circuit reaffirmed its view that “where the disclosed structure in a means-plus-function claim is a computer programmed to perform a function, the structure is a special purpose computer programmed to perform the disclosed algorithm, not a general purpose computer.”
Encyclopaedia Britannica asserted its patent directed to a computerized multimedia search system with multiple separate and independent entry paths for searching and retrieving textual and graphical information. The lone independent claim in the patent invoked § 112 ¶ 6, and on summary judgment the district court held the claim invalid for indefiniteness.
In a pattern that we’ve seen a lot of recent litigation, when the defendant argued that the means-plus-function claim was invalid for indefiniteness, the plaintiff (Britannica) responded by asserting claim was not indefinite due to the specification disclosing sufficient corresponding structure for the element because a person of ordinary skill in the art would recognize that the specification inherently discloses a class of algorithms for performing the function of retrieving information from a database on a general purpose computer.
The Federal Circuit was quick to point out – as have all the other courts where this attractive-but-misguided argument is made – that showing that one of ordinary skill in the art could build the claimed device incorrectly conflates the disclosure requirement of § 112 ¶ 6 and the enablement requirement of § 112 ¶ 1. In short, the Federal Circuit reaffirmed Aristocrat (means-plus-function limitations for computer-implemented functions require that some algorithm be disclosed in the specification, 521 F.3d at 1337) and WMS Gaming (a specification must disclose an algorithm that transforms a general purpose microprocessor to a “special purpose computer” programmed to perform the disclosed algorithm, 184 F.3d at 1349), and found the patent invalid.
The moral is certainly not that means-plus-functions claims have lessened value or that they cannot be a useful tool for computer-based claims. The key is to carefully draft the specification to ensure that the means-plus-function claims are definite.