Failure to Describe Mechanism Performing Function Invalidates Means plus Function Claim

In Default Proof Credit Card Sys. v. Home Depot, U.S.A., Inc., 412 F.3d 1291, 75 USPQ2d 1116 (Fed. Cir. 2005), Default Proof owns U.S. Patent No. 6,405,182, which directed to a Point of Sale (POS) terminal that allow individuals to obtain prepaid debit cards.  Claim 1 of U.S. Patent No. 6,405,182 recites a “means for dispensing at least one debit card for each transaction.”  Default Proof sued Home Depot and other stores for infringement of claim 1.   As a defense to infringement, Home Depot asserted that this feature of claim 1 was written in means plus function language, and thus invokes 35 U.S.C. §112, ¶6.  However, this feature lacks a description of any structure which provides a function of a “means for dispensing” debit cards as recited in claim 1 and is thus invalid for being indefinite under 35 U.S.C. §112, ¶2. On appeal to the Federal Circuit, the Federal Circuit upheld the finding of invalidity since, although there was a link between the recited function and the POS terminal, there was no disclosure of any structure used by  the POS terminal which actually dispensed the debit card.  Further, the fact that certain types of POS terminals were known to have such a feature, there was no suggestion in the specification that any of these types of POS terminals could be used and claim 1 recites the means for dispensing as being separate from the POS terminal itself.  As stated by the Federal Circuit, “while it is true that the patentee need not disclose details of structures well known in the art, see S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1371, 59 USPQ2d 1745, 1749 (Fed. Cir 2001), the specification must nonetheless disclose some structure.”


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