The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending October 25, 2013. Rishi Suthar and Wes Achey prepared this edition.
Case Summaries
The Patent Application: Claims: Indefiniteness
Claim Interpretation: Means-Plus-Function
Defenses: Invalidity
Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, et al., No. 13-1007 (Fed. Cir. (D.N.J.) Oct. 22, 2013). Opinion by Taranto, joined by Lourie and Prost.
In affirming the district court’s grant of summary judgment of indefiniteness, the Federal Circuit held that a patent’s specification does not describe sufficient corresponding structure for a “computational means” element where the specification does not identify an algorithm or series of computational steps to carry out the recited function.
Ibormeith IP, LLC (“Ibormeith”) sued Mercedes-Benz USA, LLC and Daimler AG (collectively, “Mercedes”) in the U.S. District Court for the District of New Jersey, alleging infringement of Claims 1, 5, 8, and 9 of U.S. Patent No. 6,313,749 (“the ’749 patent”). At the claim construction hearing, Mercedes asserted that the “computational means” elements in independent Claims 1 and 9 were indefinite because the specification failed to disclose an algorithm that satisfied the claim limitations. The district court reserved its ruling on claim construction, indicating that the indefiniteness issue would be resolved as a threshold matter. Following the parties’ expert discovery on indefiniteness, Mercedes moved for summary judgment on the issue, which the district court ultimately granted on the ground that the specification failed to recite sufficient structure as required by 35 U.S.C. § 112(f).
Ibormeith appealed, arguing that Table 10 of the ’749 patent’s specification identified a number of factors that make up an algorithm template. However, Ibormeith and its expert admitted that one who implements the claimed system using these recited factors would still need to determine which factors ultimately to use in the algorithm, how to combine them, and the proper weight each factor is given.
In upholding the district court’s grant of summary judgment, the Federal Circuit treated Ibormeith’s interpretation of the breadth of the specification as a binding admission. Although the structure corresponding to a § 112(f) limitation need not be so specific to eliminate the need for any implementation choices by the skilled artisan, the disclosed structure must nevertheless render the bounds of the claim concrete and understandable. Here, the factors recited in the ’749 patent’s specification provide no limitations on how any values in the algorithm are calculated, combined, or weighted. Rather, the Federal Circuit noted that the specification merely disclosed a specific set of inputs, and persons of ordinary skill would need to use their own methods to devise an equation or algorithm relying on the recited inputs. Because the ’749 patent’s specification failed to provide any concrete relationship between any of the factors used in the computation, the Federal Circuit held that the recited algorithm is insufficient to render the bounds of the claim understandable under § 112. Summary judgment of indefiniteness was therefore proper.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1007.Opinion.10-18-2013.1.PDF
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