Friday, December 4, 2009

Encyclopaedia Britannica v. Alpine Electronics

This non-precedential opinion discusses the standards for the specificity of disclosure for functions carried out on computers. The court stated that, for means-plus-function claims, simply disclosing a general computer was not sufficient. The “corresponding structure for such claims is the algorithm disclosed in the specification. …If the algorithm is not adequately disclosed in the specification, the claim is invalid for indefiniteness.” (p. 6.)

The patentee made three arguments that were all rejected. First, it argued that the specification implicitly discloses a class of algorithms corresponding to the recited function to a person of skill in the art. This was rejected because it the “understanding of one of skill in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-
function claim terms.” (p. 7-8 (citing Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 719 (Fed. Cir. 2008).)

Second, it argued that the specification discloses a one-step algorithm for the recited function. This was rejected because the “purported ‘one-step’ algorithm … is not an algorithm at all. Rather, it is simply a recitation of the claimed function.” (p. 9.)

And finally, it argued that it “need not disclose an algorithm where the computer function being performed is well known.” This was rejected because, regardless of the simplicity of the algorithm, “when a means-plus-function limitation is a computer programmed with software to carry out the claimed function, a recitation of the corresponding algorithm is required to provide sufficient disclosure of structure under § 112 ¶ 6 to avoid indefiniteness under § 112 ¶ 2.” (p. 10.)