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Claims Invalid as Indefinite Where Specififcation Fails to Disclose Structure for Means-Plus-Function Limitation

June 16, 2005

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Last Month at the Federal Circuit - July 2005

Judges: Michel (author), Lourie, and Bryson

In Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., No. 05-1069 (Fed. Cir. June 16, 2005), the Federal Circuit affirmed the district court’sclaim construction and its grant of SJ of invalidity of the single asserted claim for indefiniteness.

Default Proof Credit Card System, Inc. (“Default Proof”) filed suit, asserting that the gift cards provided by Home Depot U.S.A., Inc. and several other retail businesses (collectively “Home Depot”) infringed claim 1 of Default Proof’s U.S. Patent No. 6,405,182 (“the ’182 patent”). The district court construed the claims and granted SJ that all claims of the ’182 patent were invalid for indefiniteness because the specification did not disclose any structure corresponding to one of the claimed means-plus-function limitations.

Specifically, the ’182 patent is directed to point-ofsale (“POS”) machines that allow individuals to obtain prepaid debit cards from participating merchants over the counter, and the dispute centered on the limitation “means for dispensing at least one debit card” in claim 1.

The Federal Circuit concluded that the only structure in the ’182 patent associated with the function of distributing debit cards was a generically described “dispenser” shown in a drawing. Default Proof disagreed, arguing that certain specific parts of disclosed POS terminals corresponded to the claimed means. The Federal Circuit found that the structure and language of independent claim 1 clearly indicate that the POS assembly and the dispensing means constitute separate components. In addition, the Federal Circuit noted that the hardware of the system depicted in Figure 1 illustrates the POS terminal as separate and distinct from the “dispenser” element. The Federal Circuit also discounted Default Proof’s argument that human participation, or a human being manually operating an apparatus, entails the structure corresponding to the “means for dispensing.” Citing In re Prater, 415 F.2d 1393, 1398 (C.C.P.A. 1969), the Federal Circuit explained that a human being cannot constitute a “means.”

The Federal Circuit also rejected testimony from Defendant Proof’s expert, explaining that alternative dispensing structures were known to be part of POS terminals. In particular, Default Proof’s expert had pointed to three separate alternative structures of a known POS terminal as being capable of performing the dispensing function: (1) a kiosk associated with the terminal, (2) a receipt printer peripheral portion of the POS, (3) and an LCD or CRT display peripheral of the POS operated by a merchant. The Court ruled that this testimony was contradicted by the teaching of the ’182 patent, which describes the dispenser as “loaded with three or more stacks of debit cards.” Moreover, none of this testimony explained how the three alternative structures were associated with, housed, or actually dispensed the described stacks of debit cards. Finally, the Federal Circuit ruled that testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification. Accordingly, the Court concluded that the specification of the ’182 patent discloses no structure corresponding to the claimed “means for dispensing” limitation; Default Proof could not use the declaration of its expert to rewrite the patent’s specification. Accordingly, the Court affirmed the SJ of invalidity of the sole asserted claim.