By Chris Reaves A massive infringement suit against the major players in the touch-screen mobile market ended in the Federal Circuit, which confirmed that two patents required that a computer have specific software installed, not merely the capacity to run said software should it be installed. In a small comfort to the patent holder, the Circuit also reversed a holding that certain patent claims were unsupported means-plus-function claims, finding that a textual description of the procedure involved qualified as an “algorithm” for Aristocrat purposes. Background In 1988, prosecution began on a chain of patent applications that culminated in Patents No. 5,379,057 (‘057) and No. 5,675,362 (‘362), issued in 1995 and 1997 respectively. Both patents disclosed a “portable, keyboardless computer” with components including “a touch-sensitive screen … configured for entry of responses” and an “application generator for generating [at least one] data collection application and for creating different functional libraries”. Typhoon Touch Technologies, Inc., the present assignee of the patents, sued
By Gregory L. Clinton I. INTRODUCTION The question of whether a computer component discloses adequate structure for a corresponding means-plus-function claim limitation has been a recurrent issue in recent Federal Circuit jurisprudence, most recently in the cases of Blackboard Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2d 1481, 1483 (Fed. Cir. 2008). and Net MoneyIN Inc. v. VeriSign Inc., 88 U.S.P.Q.2d 1751 (Fed. Cir. 2008). In both cases the specification of the patents at issue did not provide adequate support for means-plus-function limitations in the claims. Although the use of means-plus-function claims has fallen out of favor in recent years, means-plus-function claims remain useful in some situations. Accordingly, a brief discussion on what to include in a specification to ensure proper support for such claims may be helpful to avoid problems during prosecution or litigation II. ENABLEMENT OF SOFTWARE MEANS-PLUS-FUNCTION CLAIMS Both of the two cases previously mentioned, Blackboard and Net MoneyIN, revolved in part around whether the specification provided adequate support
In Welker Bearing Company v. PHD, Inc., Case 2008-1169 (Fed. Cir. Dec. 15, 2008), the Welker Bearing Company (Welker) owns U.S. Patents 6,786,478 (‘478 patent), which issued on September 7, 2004, and 6,913,254 (‘254 Patent), which issued on July 5, 2005. The ‘254 and ‘478 patents, which have identical specifications, are directed towards locating and clamping assemblies for use during welding, with both claiming pin clamps to securely hold an item while being worked upon or welded. The pin clamps are topped with a locating pin inserted into holes in the item and clamping fingers extending from the pin clamp to secure the item to an annular ring on the pin clamp.
Patents in suit may not be construed, under 35 U.S.C. §112, sixth paragraph, to disclose computer software as structure corresponding to claimed function if patents’ specifications do not clearly link or associate software with that function, since § 112 does not permit patentee to claim in functional terms unbounded by any reference to structure in specification, and since failure to clearly link or associate software with claimed function is also failure to meet § 112’s definiteness requirement. The Federal Circuit held that the Federal District Court correctly found the corresponding structure for the “means for converting said plurality of images into a selected format” to be the VME bus based framegrabber video display board, and the computer video processor. However, the Federal Circuit held that the district court erred by identifying software as an additional corresponding structure for this limitation. There is nothing in the specification or prosecution history that clearly links or associates software with the function of converting