The Patent Light

In the last few posts, I discussed how to interpret “means plus function” clauses and have gone into great depth analyzing the U.S. 6,289,319 Patent issued to Lockwood as an example.  In this post, I will, at long last, finalize my analysis of the first “means-plus-function” claim element of U.S. 6,289,319 Patent.

Recall from previous posts, the US 6,289,319 Patent contains a single independent claim which relates to an automatic data processing system including: (1) a central processor, (2) a terminal, and (3) a means for linking the terminal to the central processor.  The central processor comprises several means-plus-function elements.  The first element is a “means for receiving information about said transactions from said remote sites.”

As explained previously, when construing the meaning or scope of a means-plus-function clause, one cannot rely on the wording of the claim element.  Instead, one must look to the specification to find a clear link between the function of the claim element and an associative structure in the specification.  I previously had to review the patent specification in painful detail in order to determine if there were any clear links or references to a structure or “means” which performs the function of “receiving information about said transactions from said remote sites.”  As explained in my last post, I could not find a clear link to a “structure” in the specification that performs this function.

So, under precedent established by the Federal Circuit, when there is no clear link to the structure or means in the specification, the claim element is indefinite and the claim is invalid. However, there appears to be an exception to this rule – which I will call the “Katz exception” because it comes from the Federal Circuit’s opinion in In re Katz Interactive Call Processing Patent, 639 F. 3d 1303 (Fed. Circ. 2011).

In Katz, the district court invalidated numerous claims own by a patent assertion company pursuant to the Federal Circuit’s analysis set forth in WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed.Cir.1999), and Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed.Cir.2008), “because the specifications of each of the patents at issue disclosed only general purpose processors and did not disclose the algorithms that those processors used to perform the recited functions.”

The Federal Circuit agreed with the district court that some claims were invalid.  One claim element under scrutiny was:

processing means connected to the interface switching means for receiving customer number data entered by a caller and for storing the customer number data in a memory and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data, the operator terminal providing other data entries to the memory to update data relating to the caller.

The Federal Circuit held that there was no algorithm disclosed which corresponded to the “based on a condition coupling an incoming call to the operator terminal” function.  Therefore, the above claim element was indefinite and the claim invalid.

However, the Federal Circuit went on to explain that the district court went too far with some of the other claim elements:

By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of “processing,” “receiving,” and “storing.” Absent a possible narrower construction of the terms “processing,” “receiving,” and “storing,” discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of “processing,” “receiving,” and “storing” are coextensive with the structure disclosed, i.e., a general purpose processor.

In other words, if the function is something that requires special programming, the patent specification must disclose the structure in the form of an algorithm.  However, if the function is generally well known and is the type of function usually performed by a general purpose processor, then a general purpose processor can supply the structure for the claimed function.

Additionally, recall the Federal Circuit’s opinion S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1370 (Fed. Cir. 2001) discussed in a previous post. In S3, the claims recited a “means. . . for selectively receiving.” Id. The specification disclosed a “selector” as the corresponding structure without providing any information about the selector’s circuitry or operation. Id. The patentee, however, “presented evidence that a selector is a standard electronic component whose structure is well known in this art, and that such standard components are usually represented in the manner shown.” Id. Accordingly, the Federal Circuit found that the selector provided adequate structure for the “means for selectively receiving.” Id. at 1371.

Turning back to the US 6,289,319 Patent, a central processor is disclosed which presumably does “processing”, “receiving,” and “storing.”  Recall, however, that the function of the claim element in the ‘319 Patent is “receiving information about said transactions from said remote sites.”  So, the question is whether this function is something that can routinely be performed by a general purpose processor, a standard component, or does this function require special programming or special hardware?

Remember that the IBM personal computer was introduced in 1981 and its adoption in businesses took a number of years.  In the 1980’s (the time of this patent), most businesses used mainframe computers or what were called mini-computers, such as the IBM System 36, and System 38 or the DEC VAX-11.  The computer systems comprised a central processor physically connected to a number of “dumb” terminals via RS-232 cables.  The central processor used a system bus or I/O bus interface (for instance, DEC computers used an Omnibus) for the control and management of external signals (i.e. requests) to and from the terminals.

So, if the function we are considering was “receiving information about said transactions from terminals at the financial institution” this function might fall under “a Katz like” exception because one skilled in the art would understand that there is some common and well known software structure capable of performing this function.  However, the function of the US 6,289, 319 Patent is “receiving information about said transactions from said remote sites.”  Although this function is common today, in 1984-1986, receiving information from said remote sites may have required specialized hardware and some form of special interface with the central processor – especially considering how the ‘319 Patent was written.

For instance, the ‘319 Patent discloses that the central processor communicates with the terminals via telephone lines.  On the terminal side, the ‘319 Patent also discloses modems to convert digital signals to analog signals and vice versa so that the signals can be transmitted or received via the phone lines.  On the central processing side of the phone line, there must be some hardware that converts the received analog signals coming through the phone lines to digital signals for use by the central processor.  Thus part, if not all, of the means for receiving would necessarily include hardware for converting from analog signals to digital signals.  However, no such hardware structure is mentioned on the central processor side of the telephone lines.

As discussed in previous posts, the US 6,289,319 Patent discusses a communications interface, a communication control unit 6, and terminal monitor and update unit 7.  Except for naming these units in functional terms, there is no detail provided about the structure of these units or about how these work together to receive an analog signal or how they how they convert analog signals of the phone lines into digital signals, etc.  Furthermore, it appears that not all of these functional units were well-known.  The reader of the ‘319 Patent is left to wonder which, if any, of these units perform the analog to digital conversion, exactly what these units are, and how these units work together.  Therefore, our function probably does not fall under a Katz like exception.

Consequently, for this claim element, the public must guess as to the definition and scope of “the means for receiving information about said transactions from said remote sites.”  According to the Federal Circuit, when this happens such a claim element fails to fulfill the “public notice function” of 35 § 112 ¶ 2 by “particularly pointing out and distinctly claiming” the invention. See Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir.2008). By claiming a processor programmed to perform a specialized function (communicating with terminals over phone lines) without disclosing the internal structure of that processor in the form of an algorithm or special equipment, the claim element is likely to exhibit the “over-breadth inherent in open-ended functional claims,” in violation of the limits Congress placed on means-plus-function claims.  Hence, a court is very likely to hold that claim 1 is invalid because the claim element of “a means for receiving information about said transactions from remote sites” is indefinite.

Obviously, this is a very complex legal subject.  If you have any questions, feel free to contact Bill Naifeh at www.naifehlaw.com.

Note: This description of the process for analyzing the US 6,289,319 patent represents the author’s personal opinion and is for illustration purposes only.  This posting is not meant to convey legal advice and no one should rely on this post in any manner whatsoever.  If you have actual questions about the validity or scope of the US 6,289,319 patent, please consult with your own patent attorney.