Intellectual Property Law

Patent Invalidity Due to Anticipation Requires that the Prior Art Include All Elements of the Claim Arranged or Combined as in the Claim

The One Sentence Summary: The panel upheld a finding of invalidity for failure to disclose a computer algorithm as supporting structure for a means-plus-function claim, but reversed the district court in finding anticipation of another claim because an anticipating reference must include all claim limitations arranged or combined as in the claimed invention.

Federal Circuit Holdings:

• The district court properly held that a claim including "means for generating an authorization indicia" was invalid for indefiniteness under 35 U.S.C. § 112 ¶ 6. The claim failed to include sufficient structure in the claim to rebut the presumption that it was a means-plus-function claim. Moreover, disclosure of a general purpose computer in the specification without disclosure of the algorithm for generating authorization indicia was not sufficient structure as required by section 112, paragraph 6.
• Plaintiff was not allowed to present a new and broader claim construction on appeal than that argued in the district court.
• A finding of anticipation under 35 U.S.C. § 102 requires that the single prior art reference disclose all the limitations of the invention "arranged or combined in the same way as in the claim." The reference relied upon by the district court to find anticipation of a claim did not meet this standard because it required picking parts of the protocols disclosed and recombining them to reach the invention.
  
• The district court did not abuse its discretion in denying a motion to amend the complaint to assert a previously-dropped claim of inducement of infringement.

Full post as published by IP Law Observer on October 22, 2008 (boomark / email).