Function Media v. Google Inc., No. 2012-1020 (Fed. Cir. Feb. 13, 2013)

Patents including claims that recite means-plus-function limitations must describe in sufficient detail the structure corresponding to the means limitations. In Function Media v. Google Inc., the Federal Circuit held that, when a claim recites a computerimplemented means-plus-function limitation, the specification must disclose an algorithm for the recited function.

The patents at issue in Function Media recite methods and systems for facilitating advertising on multiple advertising venues. Different advertising venues, such as different websites, have different formatting requirements for placed advertisements. The noted patents improve the efficiency of placing advertisements by automating the formatting process to conform an advertisement to the advertising venue. In particular, the sole independent claim of U.S. Patent No. 6,446,045 (“the ‘045 Patent”) claims “[a] method of using a network of computers to contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller.” This method comprises five steps including “providing means for transmitting said presentations to a selected media venue of the media venues.” In Function Media, the Federal Circuit held that this claim was invalid because the “providing means for transmitting” step was indefinite.

In Function Media, the Federal Circuit reiterated that use of a means-plus-function claim recitation requires that the specification provide sufficient structure to allow a person of ordinary skill in the art to know and understand the scope of the claim. The court noted that some structure must be present in the specification even if the details of the structure for the recited function are well-known in the art. As applied to computerimplemented means-plus-function features, the Federal Circuit held that a simple statement that computer software will perform the function is insufficient structure. Instead, “the specification [is required] to disclose the algorithm for performing the function.” The court left the form of the algorithm flexible, but stated that mathematical formulas, prose, or flow charts could satisfy the requirement.

The specification of the ‘045 Patent included statements that “Presentation Generating Program” software is used to automatically transmit the information, but the specification did not describe how the particular software performed that function.

Accordingly, the “providing means for transmitting” step lacked supporting structure and was, therefore, indefinite.

In view of the Function Media decision, if means-plus-function claims are desired, patent practitioners may wish to include in a specification supporting computerimplemented means-plus-function claim terms an algorithm in the form of, for example, a mathematical formula, detailed prose and/or a flow-chart, explaining how the function is performed, to provide the requisite structure for the recited functions.