E. 35 USCS § 112: Specification
“(a) In general. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
What is required for a “skilled” software developer to “make and use the same”?
The provision of actual executable software likely meets the “written description” requirement of § 112, which is perhaps the thorniest of requirements pertaining to the scope of software patents. It would also ensure that a person “skilled in the art” can make and use the program simply by running the code on whichever hardware and OS it specifies. The software-patent codebase would be required to accommodate all popular hardware platforms and operating systems, as well as Java and other pseudo-platforms.
“(b) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
What constitutes the “subject matter” of a software patent? Does this requirement invite vague, overbroad specifications? Could the software “subject matter” be demonstrated by actually executing, compiling, or otherwise processing the code?
“(c) Form. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.”
Independent code: self-containing (no calls to external programs)
Dependent/multiple dependent code: requires calls to external programs to execute
“(d) Reference in dependent forms. Subject to subsection (c), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”
Require that all necessary external-program code be submitted along with the patented code?
“(e) Reference in multiple dependent forms. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.”
Require that all code necessary to execute the patented code be submitted with the application?
“(f) Element in claim for a combination. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
If the required external program code is publicly available (such as the OS, compilers, public databases, or commercial applications), the external program need not be submitted with the application?
The following excerpts from Lexis case notes illustrate the courts’ interpretation of patent regulation on software-patent validity and infringement.
Questions of whether a specification provides enabling disclosure under 35 USCS § 112, paragraph 1, and whether the application satisfies utility requirement of 35 USCS § 101 are closely related; if claims in the application fail to meet the utility requirement because the invention is inoperative, they also fail to meet the enablement requirement because a person skilled in art cannot practice the invention. In re Swartz (2000, CA FC) 232 F3d 862, 56 USPQ2d 1703, reh den (2000, CA FC) 2000 US App LEXIS 34017.
Sufficient or Enabling Description Requirement
The inventor is required, before receiving a patent, to file in the Patent Office a written description of his invention and of the manner and process of making and using it, in such full, clear, concise, and exact terms as will enable any person skilled in the art to make, construct, and use same. Bates v Coe (1878) 98 US 31, 8 Otto 31, 25 L Ed 68.
Patent is void in not describing with sufficient accuracy the component parts necessary to accomplish the desired result. Howard v Detroit Stove Works (1893) 150 US 164, 37 L Ed 1039, 14 S Ct 68.
A correct and adequate description or disclosure of a claimed discovery is essential to the validity of a patent, for reason that such disclosure is necessary in order to give the public the benefit of the invention after the patent expires. Beidler v United States (1920) 253 US 447, 64 L Ed 1006, 40 S Ct 564.
Requirement of precision in 35 USCS § 112 serves two primary purposes; those skilled in art must be able to understand and apply teachings of invention, and enterprise and experimentation must not be discouraged by reaction of area of uncertainty as to scope of invention; on the other hand, policy of patent statute contemplates granting protection to valid inventions; this policy would be defeated if protection were accorded only to patents capable of precise definition; judicial function requires balancing of these competing considerations in individual case. Georgia-Pacific Corp. v United States Plywood Corp. (1958, CA2 NY) 258 F2d 124, 118 USPQ 122, cert den (1958) 358 US 884, 3 L Ed 2d 112, 79 S Ct 124, 119 USPQ 501.
Every embodiment of invention need not be described in the specification or illustrated by drawings in the patent so long as the form of the device is not principle of invention. Pursche v Atlas Scraper & Engineering Co. (1961, CA9 Cal) 300 F2d 467, 132 USPQ 104, 5 FR Serv 2d 275, cert den (1962) 371 US 911, 9 L Ed 2d 170, 83 S Ct 251, 135 USPQ 502, reh den (1963) 371 US 959, 9 L Ed 2d 507, 83 S Ct 499.
Under 35 USCS § 112, the specification must contain a correct and adequate description of the invention claimed in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use same; these terms need only be reasonable with respect to art involved; they need not inform the layman or disclose what the skilled already possess; they need not describe the conventional; intricacies need not be detailed ad absurdum; the skill of the inquiring artisan must be taken into account; where complexity dictates, broad terminology complies with statute; § 112 requires adequate disclosure of invention through proper description of limits of monopoly asserted, and nothing less than full disclosure complies therewith. General Electric Co. v Brenner (1968, App DC) 132 US App DC 323, 407 F2d 1258, 159 USPQ 335.
Rejection under 35 USCS § 112 first paragraph requires analysis of the "claimed" invention, including limitations and functional language in claims, and then evaluation of the specification to determine whether disclosure enables an ordinary worker to make claimed invention; and this test is met by a specification disclosing inoperative as well as operative examples and claims covering a multitude of complexes, because experimentation to determine which complexes will work is not "undue". In re Angstadt (1976, Cust & Pat App) 537 F2d 498, 190 USPQ 214.
First paragraph of 35 USCS § 112 requires a written description (1) of the invention, and (2) of the manner and process of making and using the invention; the description must be sufficiently full and clear to enable a person skilled in the art to make and use the invention. In re Barker (1977, Cust & Pat App) 559 F2d 588, 194 USPQ 470, cert den (1978) 434 US 1064, 55 L Ed 2d 764, 98 S Ct 1238, 197 USPQ 271.
Underlying 35 USCS § 112 is a public policy of exacting disclosure of the invention in return for a monopoly for the stated term so that the public will have knowledge with which to use the invention when the monopoly expires; the policy is unsatisfied if the description of the invention is inadequate to enable any person skilled in the art to make and use the invention. Vanity Fair Mills, Inc. v Cusick (1956, DC NJ) 143 F Supp 452, 110 USPQ 222.
The purpose of the enablement requirement, which is to ensure that public receives enabling knowledge in exchange for patent holder's exclusive use of invention, is fulfilled only if the specification allows use of the invention without resort to guesswork or undue experimentation. Gummow v Snap-On Tools Corp. (2001, ND Ill) 58 USPQ2d 1414.
The inventor's claims to a device for displaying an advertisement to a golfer, based on his position from a global positioning satellite system, were not entitled to a filing date of earlier application, since those earlier-filed applications did not disclose currently claimed subject matter in a manner provided by the first paragraph of 35 USCS § 112. In re Huston (2002, CA FC) 308 F3d 1267, 64 USPQ2d 1801.
Because the software patent had to be presumed valid in accordance with 35 USCS § 282, the court assumed that the patent examiner who accepted the patent deemed it to comply with the written description requirement of 35 USCS § 112; thus, although court found it questionable whether the patent adequately described the use of a website, summary judgment was not proper. Automated Bus. Cos. v WebEx Communs., Inc. (2010, SD Tex) 712 F Supp 2d 608.
Functional description
A product cannot, within patent laws, be described in terms of its use or function. Holland Furniture Co. v Perkins Glue Co. (1928) 277 US 245, 72 L Ed 868, 48 S Ct 474.
The patentee could have claimed no more of his invention than was covered in claims set forth in his application and allowed; where the device was obscurely described and confused with a description of function, the description was insufficient. Trico Products Corp. v Apco-Mossberg Corp. (1930, CA1 Mass) 45 F2d 594.
In a patent case involving a bone drill, the district court did not err in limiting the claim to cover only anchors with one or more cutting edges and flutes due to "drill means" limitation, thus excluding disclosed embodiments and all equivalents, because 35 USCS § 112 p. 6 limits means element in the claim to the structure disclosed in the specification and its equivalents. There was no error in the district court's construction of "means for securing" in a claim involving a bone drill because 35 USCS § 112 expressly restricts coverage of the means-plus-function claim to the structure disclosed in the specification and equivalents of that structure. Mitek Surgical Prods., Inc. v Arthrex, Inc. (2000, CA FC) 2000-1 CCH Trade Cases P 72803.
Functional characterization, defining something by what it does rather than by what it is, even at the so-called "point of novelty" in a patent description, will not, of itself, invalidate a patent claim; the merits of such a characterization are to be tested in the light of the two requirements that descriptive language in the claim be precise and not overboard. In re Swinehart (1971) 58 CCPA 1027, 439 F2d 210, 169 USPQ 226.
Once 35 USCS § 112, para. 6, is invoked, the patentee must detail in the specification adequate disclosure showing what is meant by that language; if the 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 § 112, para. 2; accordingly, if only the structure identified in the specification to perform the determined function is part of a preferred embodiment, such structure must be part of the "corresponding structure" of a means-plus-function claim, or else patentee has failed to claim any structure. Bausch & Lomb, Inc. v Moria S.A. (2002, ED Pa) 222 F Supp 2d 616, different results reached on reconsideration (2002, ED Pa) 222 F Supp 2d 616.
The patent claim was not a means-plus-function claim, where it depended on another claim that contained enough structure to perform recited functions and added additional structural limitations. ASM Am., Inc. v Genus, Inc. (2002, ND Cal) 260 F Supp 2d 827.
The district court did not err when it found that U.S. Patent No. 6,093,102 was invalid under 35 USCS § 112 because it was indefinite; the patent, which was issued for an electronic slot machine that purportedly increased player interest by providing players with greater control over the definition of winning opportunities, did not disclose required algorithm or algorithms machine used to function, and a person of ordinary skill in the art would not have recognized the patent as disclosing any algorithm at all. Aristocrat Techs. Austl. PTY Ltd. v Int'l Game Tech. (2008, CA FC) 521 F3d 1328, 86 USPQ2d 1235.
The trial court properly found several patent claims were indefinite because they claimed the processor programmed to perform the specialized function without disclosing the internal structure of that processor in the form of an algorithm, and thereby failed to satisfy the requirements of 35 USCS § 112, para. 6; however, other claims were not indefinite because the functions were coextensive with a general-purpose processor. Katz Interactive Call Processing Patent Litig. v Am. Airlines, Inc. (In re Katz Interactive Call Processing Patent Litig.) (2011, CA FC) 639 F3d 1303, 97 USPQ2d 1737, reh den, reh, en banc, den (2011, CA FC) 2011 US App LEXIS 9473.
Because the patent's description contained sufficient algorithmic structure for the programmatic procedures needed to provide cross-referencing responses, and there was no evidence that a programmer of ordinary skill in the field would not understand how to implement this function, the patent claim was not indefinite under 35 USCS § 112, para. 2. Typhoon Touch Techs., Inc. v Dell, Inc. (2011, CA FC) 659 F3d 1376, 100 USPQ2d 1690.
Thoroughly convincing evidence showing that workers of ordinary skill can follow the disclosure of the application and easily program a computer to accomplish the claimed results is considered in reversing a finding of the Patent and Trademark Office that the disclosure is inadequate. Hirschfeld v Banner (1978, DC Dist Col) 462 F Supp 135, 200 USPQ 276, affd without op (1980, App DC) 199 US App DC 9, 615 F2d 1368, cert den (1981) 450 US 994, 68 L Ed 2d 193, 101 S Ct 1695, 210 USPQ 776.
The term "aesthetically pleasing" in a patent for portal software ran afoul of the definiteness requirement of 35 USCS § 112, para. 2, because, inter alia: based on various dictionary definitions, the phrase "aesthetically pleasing" seemed to mean having beauty that gives pleasure or enjoyment, which seemed to be quite subjective; the prior related patent's specification provided little guidance with respect to the meaning of the term "aesthetically pleasing" and did not seem specifically to define the term; and although the patent examiner for the subject patent never raised any concerns regarding the "aesthetically pleasing" phrase, the examiner for the prior patent questioned the term as being "highly subjective." Datamize, LLC v Plumtree Software, Inc. (2004, ND Cal) 2004 US Dist LEXIS 28382, affd (2005, CA FC) 417 F3d 1342, 75 USPQ2d 1801.
In a patent infringement suit regarding a patent for a transaction system for facilitating computer-to-computer commercial transactions by integrating certain functions to enable international purchases of goods over Internet, the means-plus-functions claimed by the plaintiff in certain claims of one of its patents were invalid due to indefiniteness under 35 USCS § 112 para. 6 because (1) the specification merely mentioned software, but it did not disclose algorithm, (2) no structure was otherwise described in the specification, and (3) such a structure could not be provided solely by expert testimony or by a provisional patent application. DE Techs., Inc. v Dell, Inc. (2006, WD Va) 428 F Supp 2d 512.
When software is linked to a disclosed function, the corresponding structure must be a specific algorithm disclosed in the patent, rather than just "algorithm." Uniloc United States v Microsoft Corp. (2006, DC RI) 447 F Supp 2d 177.
The means-plus-function limitations of a patent claim describing apparatus for determining whether the party sending e-mail to intended receiving party was authorized lacked sufficient disclosure of structure under 35 USCS § 112, para. 6, and was, therefore indefinite. CBT Flint Ptnrs, LLC v Return Path, Inc. (2008, ND Ga) 566 F Supp 2d 1363.
Software corporations were entitled to summary judgment of invalidity of a patent related to an invention that was designed to monitor the performance of electronic devices and detect software piracy on those devices; claims reciting detection means were invalid as indefinite under 35 USCS § 112 para. 2 for failure to disclose and clearly link any structure to the recited function. Absolute Software, Inc. v Stealth Signal, Inc. (2010, SD Tex) 731 F Supp 2d 661.
III. Consistency and Predictability of Software-Patent Court Decisions
What is required for a “skilled” software developer to “make and use the same”?
The provision of actual executable software likely meets the “written description” requirement of § 112, which is perhaps the thorniest of requirements pertaining to the scope of software patents. It would also ensure that a person “skilled in the art” can make and use the program simply by running the code on whichever hardware and OS it specifies. The software-patent codebase would be required to accommodate all popular hardware platforms and operating systems, as well as Java and other pseudo-platforms.
“(b) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
What constitutes the “subject matter” of a software patent? Does this requirement invite vague, overbroad specifications? Could the software “subject matter” be demonstrated by actually executing, compiling, or otherwise processing the code?
“(c) Form. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.”
Independent code: self-containing (no calls to external programs)
Dependent/multiple dependent code: requires calls to external programs to execute
“(d) Reference in dependent forms. Subject to subsection (c), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”
Require that all necessary external-program code be submitted along with the patented code?
“(e) Reference in multiple dependent forms. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.”
Require that all code necessary to execute the patented code be submitted with the application?
“(f) Element in claim for a combination. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
If the required external program code is publicly available (such as the OS, compilers, public databases, or commercial applications), the external program need not be submitted with the application?
The following excerpts from Lexis case notes illustrate the courts’ interpretation of patent regulation on software-patent validity and infringement.
Questions of whether a specification provides enabling disclosure under 35 USCS § 112, paragraph 1, and whether the application satisfies utility requirement of 35 USCS § 101 are closely related; if claims in the application fail to meet the utility requirement because the invention is inoperative, they also fail to meet the enablement requirement because a person skilled in art cannot practice the invention. In re Swartz (2000, CA FC) 232 F3d 862, 56 USPQ2d 1703, reh den (2000, CA FC) 2000 US App LEXIS 34017.
Sufficient or Enabling Description Requirement
The inventor is required, before receiving a patent, to file in the Patent Office a written description of his invention and of the manner and process of making and using it, in such full, clear, concise, and exact terms as will enable any person skilled in the art to make, construct, and use same. Bates v Coe (1878) 98 US 31, 8 Otto 31, 25 L Ed 68.
Patent is void in not describing with sufficient accuracy the component parts necessary to accomplish the desired result. Howard v Detroit Stove Works (1893) 150 US 164, 37 L Ed 1039, 14 S Ct 68.
A correct and adequate description or disclosure of a claimed discovery is essential to the validity of a patent, for reason that such disclosure is necessary in order to give the public the benefit of the invention after the patent expires. Beidler v United States (1920) 253 US 447, 64 L Ed 1006, 40 S Ct 564.
Requirement of precision in 35 USCS § 112 serves two primary purposes; those skilled in art must be able to understand and apply teachings of invention, and enterprise and experimentation must not be discouraged by reaction of area of uncertainty as to scope of invention; on the other hand, policy of patent statute contemplates granting protection to valid inventions; this policy would be defeated if protection were accorded only to patents capable of precise definition; judicial function requires balancing of these competing considerations in individual case. Georgia-Pacific Corp. v United States Plywood Corp. (1958, CA2 NY) 258 F2d 124, 118 USPQ 122, cert den (1958) 358 US 884, 3 L Ed 2d 112, 79 S Ct 124, 119 USPQ 501.
Every embodiment of invention need not be described in the specification or illustrated by drawings in the patent so long as the form of the device is not principle of invention. Pursche v Atlas Scraper & Engineering Co. (1961, CA9 Cal) 300 F2d 467, 132 USPQ 104, 5 FR Serv 2d 275, cert den (1962) 371 US 911, 9 L Ed 2d 170, 83 S Ct 251, 135 USPQ 502, reh den (1963) 371 US 959, 9 L Ed 2d 507, 83 S Ct 499.
Under 35 USCS § 112, the specification must contain a correct and adequate description of the invention claimed in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use same; these terms need only be reasonable with respect to art involved; they need not inform the layman or disclose what the skilled already possess; they need not describe the conventional; intricacies need not be detailed ad absurdum; the skill of the inquiring artisan must be taken into account; where complexity dictates, broad terminology complies with statute; § 112 requires adequate disclosure of invention through proper description of limits of monopoly asserted, and nothing less than full disclosure complies therewith. General Electric Co. v Brenner (1968, App DC) 132 US App DC 323, 407 F2d 1258, 159 USPQ 335.
Rejection under 35 USCS § 112 first paragraph requires analysis of the "claimed" invention, including limitations and functional language in claims, and then evaluation of the specification to determine whether disclosure enables an ordinary worker to make claimed invention; and this test is met by a specification disclosing inoperative as well as operative examples and claims covering a multitude of complexes, because experimentation to determine which complexes will work is not "undue". In re Angstadt (1976, Cust & Pat App) 537 F2d 498, 190 USPQ 214.
First paragraph of 35 USCS § 112 requires a written description (1) of the invention, and (2) of the manner and process of making and using the invention; the description must be sufficiently full and clear to enable a person skilled in the art to make and use the invention. In re Barker (1977, Cust & Pat App) 559 F2d 588, 194 USPQ 470, cert den (1978) 434 US 1064, 55 L Ed 2d 764, 98 S Ct 1238, 197 USPQ 271.
Underlying 35 USCS § 112 is a public policy of exacting disclosure of the invention in return for a monopoly for the stated term so that the public will have knowledge with which to use the invention when the monopoly expires; the policy is unsatisfied if the description of the invention is inadequate to enable any person skilled in the art to make and use the invention. Vanity Fair Mills, Inc. v Cusick (1956, DC NJ) 143 F Supp 452, 110 USPQ 222.
The purpose of the enablement requirement, which is to ensure that public receives enabling knowledge in exchange for patent holder's exclusive use of invention, is fulfilled only if the specification allows use of the invention without resort to guesswork or undue experimentation. Gummow v Snap-On Tools Corp. (2001, ND Ill) 58 USPQ2d 1414.
The inventor's claims to a device for displaying an advertisement to a golfer, based on his position from a global positioning satellite system, were not entitled to a filing date of earlier application, since those earlier-filed applications did not disclose currently claimed subject matter in a manner provided by the first paragraph of 35 USCS § 112. In re Huston (2002, CA FC) 308 F3d 1267, 64 USPQ2d 1801.
Because the software patent had to be presumed valid in accordance with 35 USCS § 282, the court assumed that the patent examiner who accepted the patent deemed it to comply with the written description requirement of 35 USCS § 112; thus, although court found it questionable whether the patent adequately described the use of a website, summary judgment was not proper. Automated Bus. Cos. v WebEx Communs., Inc. (2010, SD Tex) 712 F Supp 2d 608.
Functional description
A product cannot, within patent laws, be described in terms of its use or function. Holland Furniture Co. v Perkins Glue Co. (1928) 277 US 245, 72 L Ed 868, 48 S Ct 474.
The patentee could have claimed no more of his invention than was covered in claims set forth in his application and allowed; where the device was obscurely described and confused with a description of function, the description was insufficient. Trico Products Corp. v Apco-Mossberg Corp. (1930, CA1 Mass) 45 F2d 594.
In a patent case involving a bone drill, the district court did not err in limiting the claim to cover only anchors with one or more cutting edges and flutes due to "drill means" limitation, thus excluding disclosed embodiments and all equivalents, because 35 USCS § 112 p. 6 limits means element in the claim to the structure disclosed in the specification and its equivalents. There was no error in the district court's construction of "means for securing" in a claim involving a bone drill because 35 USCS § 112 expressly restricts coverage of the means-plus-function claim to the structure disclosed in the specification and equivalents of that structure. Mitek Surgical Prods., Inc. v Arthrex, Inc. (2000, CA FC) 2000-1 CCH Trade Cases P 72803.
Functional characterization, defining something by what it does rather than by what it is, even at the so-called "point of novelty" in a patent description, will not, of itself, invalidate a patent claim; the merits of such a characterization are to be tested in the light of the two requirements that descriptive language in the claim be precise and not overboard. In re Swinehart (1971) 58 CCPA 1027, 439 F2d 210, 169 USPQ 226.
Once 35 USCS § 112, para. 6, is invoked, the patentee must detail in the specification adequate disclosure showing what is meant by that language; if the 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 § 112, para. 2; accordingly, if only the structure identified in the specification to perform the determined function is part of a preferred embodiment, such structure must be part of the "corresponding structure" of a means-plus-function claim, or else patentee has failed to claim any structure. Bausch & Lomb, Inc. v Moria S.A. (2002, ED Pa) 222 F Supp 2d 616, different results reached on reconsideration (2002, ED Pa) 222 F Supp 2d 616.
The patent claim was not a means-plus-function claim, where it depended on another claim that contained enough structure to perform recited functions and added additional structural limitations. ASM Am., Inc. v Genus, Inc. (2002, ND Cal) 260 F Supp 2d 827.
The district court did not err when it found that U.S. Patent No. 6,093,102 was invalid under 35 USCS § 112 because it was indefinite; the patent, which was issued for an electronic slot machine that purportedly increased player interest by providing players with greater control over the definition of winning opportunities, did not disclose required algorithm or algorithms machine used to function, and a person of ordinary skill in the art would not have recognized the patent as disclosing any algorithm at all. Aristocrat Techs. Austl. PTY Ltd. v Int'l Game Tech. (2008, CA FC) 521 F3d 1328, 86 USPQ2d 1235.
The trial court properly found several patent claims were indefinite because they claimed the processor programmed to perform the specialized function without disclosing the internal structure of that processor in the form of an algorithm, and thereby failed to satisfy the requirements of 35 USCS § 112, para. 6; however, other claims were not indefinite because the functions were coextensive with a general-purpose processor. Katz Interactive Call Processing Patent Litig. v Am. Airlines, Inc. (In re Katz Interactive Call Processing Patent Litig.) (2011, CA FC) 639 F3d 1303, 97 USPQ2d 1737, reh den, reh, en banc, den (2011, CA FC) 2011 US App LEXIS 9473.
Because the patent's description contained sufficient algorithmic structure for the programmatic procedures needed to provide cross-referencing responses, and there was no evidence that a programmer of ordinary skill in the field would not understand how to implement this function, the patent claim was not indefinite under 35 USCS § 112, para. 2. Typhoon Touch Techs., Inc. v Dell, Inc. (2011, CA FC) 659 F3d 1376, 100 USPQ2d 1690.
Thoroughly convincing evidence showing that workers of ordinary skill can follow the disclosure of the application and easily program a computer to accomplish the claimed results is considered in reversing a finding of the Patent and Trademark Office that the disclosure is inadequate. Hirschfeld v Banner (1978, DC Dist Col) 462 F Supp 135, 200 USPQ 276, affd without op (1980, App DC) 199 US App DC 9, 615 F2d 1368, cert den (1981) 450 US 994, 68 L Ed 2d 193, 101 S Ct 1695, 210 USPQ 776.
The term "aesthetically pleasing" in a patent for portal software ran afoul of the definiteness requirement of 35 USCS § 112, para. 2, because, inter alia: based on various dictionary definitions, the phrase "aesthetically pleasing" seemed to mean having beauty that gives pleasure or enjoyment, which seemed to be quite subjective; the prior related patent's specification provided little guidance with respect to the meaning of the term "aesthetically pleasing" and did not seem specifically to define the term; and although the patent examiner for the subject patent never raised any concerns regarding the "aesthetically pleasing" phrase, the examiner for the prior patent questioned the term as being "highly subjective." Datamize, LLC v Plumtree Software, Inc. (2004, ND Cal) 2004 US Dist LEXIS 28382, affd (2005, CA FC) 417 F3d 1342, 75 USPQ2d 1801.
In a patent infringement suit regarding a patent for a transaction system for facilitating computer-to-computer commercial transactions by integrating certain functions to enable international purchases of goods over Internet, the means-plus-functions claimed by the plaintiff in certain claims of one of its patents were invalid due to indefiniteness under 35 USCS § 112 para. 6 because (1) the specification merely mentioned software, but it did not disclose algorithm, (2) no structure was otherwise described in the specification, and (3) such a structure could not be provided solely by expert testimony or by a provisional patent application. DE Techs., Inc. v Dell, Inc. (2006, WD Va) 428 F Supp 2d 512.
When software is linked to a disclosed function, the corresponding structure must be a specific algorithm disclosed in the patent, rather than just "algorithm." Uniloc United States v Microsoft Corp. (2006, DC RI) 447 F Supp 2d 177.
The means-plus-function limitations of a patent claim describing apparatus for determining whether the party sending e-mail to intended receiving party was authorized lacked sufficient disclosure of structure under 35 USCS § 112, para. 6, and was, therefore indefinite. CBT Flint Ptnrs, LLC v Return Path, Inc. (2008, ND Ga) 566 F Supp 2d 1363.
Software corporations were entitled to summary judgment of invalidity of a patent related to an invention that was designed to monitor the performance of electronic devices and detect software piracy on those devices; claims reciting detection means were invalid as indefinite under 35 USCS § 112 para. 2 for failure to disclose and clearly link any structure to the recited function. Absolute Software, Inc. v Stealth Signal, Inc. (2010, SD Tex) 731 F Supp 2d 661.
III. Consistency and Predictability of Software-Patent Court Decisions
Copyright 2014-2015 by Dennis O'Reilly/Rag Hall -- All rights reserved.