Intellectual Property Law

Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification

By McKee, Voorhees & Sease, P.L.C.

In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite.  The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification.  The district court held the claims invalid because there was no "structure" (i.e., algorithm) disclosed in the specification corresponding to the means-plus-function clauses.

The Federal Circuit affirmed, noting that when a means-plus-function clause is computer-implemented, there must be at least one example in the specification of an algorithm performing the function in order to meet the requirements of 35 U.S.C. § 112 ¶ 6 .  Without such an example, what is left is purely functional claim language, which is impermissible under the statute. 

Likewise, it is insufficient to argue that one of ordinary skill in the art would be able to implement the method.  While that may solve any § 112 ¶ 1 enablement concerns, it does not meet the statutory requirement of a disclosure of "structure" in § 112 ¶ 6.  As a result, the claims were held invalid as indefinite.

More detail of Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech. after the jump.

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Full post as published by FileWrapper on March 31, 2008 (boomark / email).