Further disincentivizing the use of means-plus-function claim elements in software patents, the U.S. Court of Appeals for the Federal Circuit upheld an indefiniteness ruling, concluding that the specification in issue failed to disclose an algorithm to perform all of the functions assigned to the means-plus-function element. Noah Sys., Inc. v. Intuit Inc., Case No. 11-1390 (Fed. Cir., Apr. 9, 2012) (O’Malley, J.).
The patent-in-suit relates to a system for automated financial accounting. The claims recite an “access means” for providing authorized users access to a master ledger on a financial accounting computer so that the user can enter, delete, review, adjust and process data in the ledger.
Without hearing expert testimony, the district court held that Noah’s specification does not disclose an algorithm supporting the claimed “access means” as required by Federal Circuit precedent for computer-implemented means plus function claim elements. Noah appealed. The issues on appeal were whether the district court was required to consider expert testimony and whether the patent specification adequately supported the claimed “access means.”
On appeal, the Federal Circuit considered the claim element and concluded that the claimed “access means” performs two functions: authorizing users and permitting users to enter, delete, review, adjust and process data. However, the Court disagreed with the district court in finding that the specification did indeed disclose an algorithm for the first function, namely using a pass code system to grant access to a user. However, the Court also found that the specification did not disclose an algorithm for permitting a user to modify data. By analogy, the Court analogized the situation to giving a user a pass code to unlock a Microsoft Word document but without providing the user a program to modify the document.
Finding support in the specification for only one of two recited functions, the Court turned to whether the indefiniteness issue could be decided without expert testimony. The Court noted two lines of cases—the first where a specification discloses no algorithm and the second where an algorithm is disclosed but the adequacy of the disclosure (in terms of satisfying the definiteness requirement of § 112, ¶ 2 in the context of § 112, ¶ 6 claim elements) was in dispute (see Aristocrat, IP Update, Vol. 11, No. 4). The first line of cases stand for the proposition that evidence as to the view of one skilled in the art is unnecessary as “a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Where, as here, an algorithm is disclosed for performing only some of multiple claimed functions, the Court concluded that the claim falls into the first line of cases and no expert testimony is required to decide the indefiniteness issue.
Citing Aristocrat and Blackboard, the Federal Circuit also rejected Noah’s argument that the specification was adequate because one skilled in the art would have known how to program a computer to permit a user to modify data. The Federal Circuit concluded that argument could not withstand scrutiny—and was the same argument it rejected in Finisar (see IP Update, Vol. 11, No. 5)—because, if accepted, a means plus function claim’s scope would include any conceivable structure for performing the claimed function, contrary to the specificity required for such claims to be definite.
Practice Note: This case, along with the Ergo Licensing decision (decided on March 26, 2012), indicates the Federal Circuit’s continued trend to strictly analyze compliance with the § 112, ¶ 2 definiteness requirement of software related means-plus-function (§ 112, ¶ 6) claim elements.