Patent Claims Indefinite: No Structure Supports Recited Software Means

The Federal Circuit has held patent claims indefinite under 35 U.S.C. § 112 where the claims recited “means for processing,” but the patent specification failed to disclose any structure that performed the recited means. Eplus, Inc. v. Lawson Software, Nos. 2011-1396, -1456, -1554 (Fed. Cir. Nov. 21, 2012). This case continues a line of Section 112 indefiniteness cases that emphasize the importance of disclosing structures to support recited means in computer-implemented inventions.

Certain claims of U.S. Patent Nos. 6,023,683 and 6,505,172 recited “means for processing said requisition to generate purchase orders for said selected matching items.” The District Court had found these claims valid under Section 112, holding that the common Specification of the patents-in-suit disclosed a “a purchase order generation module.”  However, the Federal Circuit found no such structure mentioned in the Specification.

The Specification’s background section disclosed prior art requisition systems. Another section of the Specification discussed means for generating purchase orders, but did not disclose any corresponding structures for carrying out these means. Yet a third section of the Specification discussed how requisitions could be converted to purchase orders, but provided only a black box in which this function was performed without disclosing any corresponding structure.

The Court explained that the patent owner’s argument that one of ordinary skill in the art would have known how to carry out the recited means was the wrong argument. The proper query was whether “one of skill in the art would have understood that disclosure to encompass [the required structure].” (Quoting Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).) Here, the Court further explained, the Specification did

not disclose any structure that is responsible for generating purchase orders. There is no instruction for using a particular piece of hardware, employing a specific source code, or following a particular algorithm. There is therefore nothing in the specification to help cabin the scope of the functional language in the means for processing element: The patentee has in effect claimed everything that generates purchase orders under the sun. The system claims are therefore indefinite.

Before it addressed the question of indefiniteness, the Court also held that the defendant had not waived its right to appeal the question of indefiniteness by failing to raise the issue at trial. The defendant had raised the issue in its summary judgment motion, and again in post-trial motions, and appeared to have understood that there was no point in raising the question of indefiniteness at trial because it was purely a matter of law. Based on this record, the Court held that the right to appeal was not waived.

This case presented several other interesting issues. The trial court, to enforce discovery rules and avoid delaying trial, had precluded the patent owner from presenting any evidence of damages at trial where it’s economic expert’s methodology was suspect. The Federal Circuit refused to reverse this decision. The Court also upheld the infringement of certain claims, while reversing with respect to certain others.

Further, the Federal Circuit declined to allow the fact that the patent owner could not present evidence on damages to influence the scope of the injunction that it obtained. Thus, the Court rejected the defendant’s argument that “the district court should not have enjoined it from servicing and maintaining products sold before the injunction issued.” The Court explained that simply because the patent owner was not allowed to present evidence of damages did not mean that the defendant had been allowed to sell infringing products.

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