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Software-Related Means-Plus-Function Claims Found Indefinite for Lack of Algorithmic Structure Corresponding to One of Multiple Identified Functions

April 09, 2012

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Last Month at the Federal Circuit - May 2012

Judges: Rader, O’Malley (author), Reyna

[Appealed from: W.D. Pa., Judge Schwab]

In Noah Systems, Inc. v. Intuit Inc., No. 11-1390 (Fed. Cir. Apr. 9, 2012), the Federal Circuit affirmed the district court’s holding of invalidity on the ground of indefiniteness, where the specification of a patent with claims directed to an “access means” limitation did not disclose an algorithm to perform that function.

Noah Systems, Inc. (“Noah”) brought suit against Intuit Inc. (“Intuit”), alleging infringement of U.S. Patent No. 5,875,435 (“the ’435 patent”), directed to an automated financial accounting system. All of the asserted claims of the ’435 patent contain an “access means” limitation, which the parties agreed was a means-plus-function limitation performing the function of “providing access to said file of said financial accounting computer for said first entity and/or agents of said first entity so that said first entity and/or said agent can perform one or more activities selected from the group consisting of entering, deleting, reviewing, adjusting and processing said data inputs.” Slip op. at 5-6 (emphasis and citation omitted). In Noah’s view, its specification adequately disclosed an algorithm corresponding to this function because it disclosed a financial access computer programmed to allow access upon entry of a passcode. In Intuit’s view, on the other hand, the specification did not disclose any sufficient algorithm corresponding to the function.

The district court, adopting the recommendation of a special master, found the “access means” limitation indefinite during claim construction. In a motion for reconsideration, Noah asserted that expert evidence was necessary to explain how one of ordinary skill in the art would have understood the specification. The district court denied the motion, determining that expert evidence was inappropriate because no algorithm was disclosed.

Based on the claim construction order finding the “access means” limitation indefinite, Intuit sought an SJ motion of invalidity. In opposition, Noah renewed its position that an indefiniteness determination should not have been made without expert opinion, and submitted two expert declarations in support of its position. Again adopting the special master’s recommendation, the district court granted SJ, finding that the specification lacked the necessary structure because it disclosed no algorithm at all, and, therefore, the district court need not consider the expert testimony proffered by Noah. Noah appealed.

The Court affirmed, but based on different reasoning. After rejecting Intuit’s argument that Noah presented a new claim construction argument on appeal and therefore waived it, the Court turned to the merits of Noah’s argument and agreed—contrary to the views of the district court and Intuit—that the specification disclosed at least some algorithm related to the function of the “access means.” In particular, the Court found Noah correctly identified an algorithm in its specification for the passcode function associated with the “access means.” That algorithm was not enough, however, to provide the necessary structure for the “access means” because that really included two functions: (1) providing access to the file, and (2) once access is provided, enabling the performance of one or more delineated activities. Noah’s passcode algorithm only supported the first function.

Analyzing the question of whether Noah’s specification disclosed an algorithm corresponding to the second function, the Court held the specification deficient. The Court found that several disclosures identified by Noah, including disclosures related to unlocking a computer file, did not suffice because those disclosures did not correspond to the other acts recited in the “access means” limitation, such as “entering,” “deleting,” “reviewing,” and “adjusting” financial transaction data. Id. at 21. These specialized functions, the Court explained, could not be accomplished absent specialized programming. And the Court noted Noah’s failure to disclose this specialized programming.

Noah disclosed that some type of accounting software was required for the patented system to operate, such as “off-the-shelf accounting software” for a personal computer. Id. at 24. But the specification described the operation of such software using functional, not structural, language. For example, according to the specification, the software would allow users to “perform activities selected from the group consisting of entering, deleting, reviewing, adjusting and processing data inputs in the master ledger,” or “change orders, recording instruction adjustments, manual transactions, and the like.” Id. (citations omitted). This purely functional language, in the Court’s view, simply restates the function associated with the means-plus-function limitation, and cannot provide the required corresponding structure.

Noah tried to fill this gap in its specification by attempting to import its reference to off-the-shelf software into the claims and asserting that those of ordinary skill would have understood how to accomplish the function described with the assistance of off-the-shelf software. The Court rejected these arguments, explaining that the disclosure itself must identify the method for performing the function, whether or not a skilled artisan might otherwise be able to glean such a method from other sources or from his own understanding. This rule requiring the disclosure of specific programming, the Court explained, safeguards against purely functional claiming when a patentee employs a special purpose computer-implemented means-plus-function limitation.

After concluding that the specification only disclosed a partial algorithm for the functional language associated with the “access means” limitation, the Court explained that its case law differentiates between cases where a patent specification discloses no algorithm and cases where the specification discloses an algorithm that a defendant challenges as inadequate. Where no algorithm is disclosed, expert testimony is irrelevant. On the other hand, when the parties dispute the adequacy of a disclosed algorithm, adequacy is judged from the viewpoint of a person of ordinary skill, making expert testimony potentially relevant.

For cases like this one, where the specification discloses an algorithm for less than all of multiple identifiable functions recited in a claim, the Court decided to analyze the disclosures as if no algorithm is disclosed. The Court explained, in support of this approach, that it could not allow disclosure as to one function to fill the gaps in a specification as to a different, albeit related, function, or else it would open the door to generic and unbounded functional claiming. Applying this rule, the Court concluded that the district court did not err when it refused to allow expert testimony or other evidence regarding what one skilled in the art would understand from the specification before it held the “access means” limitation as indefinite, and granted SJ of invalidity.

Summary authored by John S. Sieman, Esq.