The Patent Light

In the last few posts, I discussed how to interpret “means plus function” clauses and used the U.S. 6,289,319 Patent issued to Lockwood as an example.  In this post, I will continue my analysis of certain claim elements 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.

In order to interpret the claims, I started with the central processor and looked at the first claim element of the central processor.  To continue the example, I will now analyze the second element, which is:

Means for retrievably storing said information

As previously explained, the first step in analyzing a means plus function claim is to determine the “function” of the claim element.  For simplicity and the sake of this series of posts, I will assume that the function of this means-plus-function clause is the actual wording of the claim, which is:

retrievably storing said information

Recall that “said information” refers to “means for receiving information” from the first claim element.  So, “said information” is information from the remote sites.  Thus, the function is:

retrievably storing information from remote sites

Once we determine the “function” of a means-plus-function clause, the next step is to determine what structure, if any, is disclosed in the specification that is linked or associated with the function.  The structure in the specification determines the meaning and scope of the claim element.  Obviously, from an infringement analysis perspective, it is important to determine the meaning and scope of the claim element.  (Of course, if no structure or a clear association to structure can be found in the specification, then the claim element is indefinite, and therefore, the claim is invalid.)

As with the previous post, I will first start with the drawings relating to the central processor (which conveniently is only Fig. 1). A portion of Fig. 1 is reproduced below:

In Fig. 1, the central processor is only represented as a box labeled with a reference numeral “4”.  The only structural candidate for the function of “retrievably storing information from remote sites” appears to be the memory which is labeled with a reference numeral “8.” The memory contains three files: a loan rate file 9, a quoted case file 10, and an active case file 11.  Because the files in the memory 8 seem to be linked (via the unidentified lines to the central processor 4, one can assume that memory 8 is some form of computer memory. Thus, from the drawings “MEMORY 8” appears to be the closest structural candidate for the function of “retrievably storing information from remote sites.”

Next, I will review the specification of the U.S. 6,289,319 Patent to specifically look for any wording which even remotely corresponds to the function of “retrievably storing information from remote sites” that can be associated with the central processor.  For convenience, I have numbered the provisions I found below:

(1)       The memory 8 of the central processor 4 holds some files 9 in which are stored information about the various loans available to customers from the institution. This information includes loan rates and repayment schedules. These loans include real estate loans, loans to finance the purchase of automobiles, boats and other vehicles, personal loans secured by certificates of deposit, stocks and other assets controlled by the financial institution 1 and unsecured personal loans.

(2)       Loan packages which have been quoted to customers are stored in a quoted case file 10 pending acceptance and execution by the applicant.

(3)       The central processor 4 of the financial institution 1 periodically sends to the terminals 5 at the various remote sites 2 loan rate information and other data pertinent to the loans available from that institution which are extracted from the loan rate file 9. That information is stored in the various terminals and can be reviewed by an applicant in need of a loan.

(4)       The terminal 5 is programmed to compute the credit worthiness of the applicant and to approve or disapprove the loan. Once the loan has been approved the applicant is requested to accept it or reject it. Accepted loan information is transmitted to the central processor of the financial institution and stored in the active case file 11.

(5)       Information about loans which have not been accepted on the spot, are also transmitted to the financial institution and stored for a period of time in the quoted case file 10.

(6)       The terminal then addresses the financial institution and requests 32 the prior loan quotation stored in the quoted case file 10 of the central processor 4. This is done by the data processor 13 of the terminal dialing the institution phone number through the modem 15 and sending a request message. The terminal goes into a standby mode with its DMA unit 16 waiting for a transfer of information from the line into the RAM memory 17.

(7)       Once a loan quotation has been presented to thus applicant he is asked whether or not he wants to apply for the loan 54. If his answer is negative, the fictitious loan officer expresses final greetings 55. The loan quotation, if not already in storage at the financial institution, is transmitted there for temporary storage in the quoted case file 10 of the central processor 4.

From the above passages, it seems clear that the “loan rate file 9” contains information that is sent to the remote sites.  However, only the quoted case file 10 and active case file 11 contain information received from the remote sites.

So, the “structure” corresponding to the function of “retrievably storing said information” most like refers to the quoted case file 10 or the active case file 11 of the memory 8.

However, in 1984-1986, computer processors had several types of memory, including disk storage, reel-to-reel tapes, cassettes and working storage memory.  The drawings seem to indicate that the memory was the type of memory that would hold files, which in 1984-1986 would have been most likely been reel-to-reel tapes, cassettes or disc memory on a peripheral.  Nothing in the drawings or specification indicate what type of memory would be used by the central processor.

Using the logic of  Ergo Licensing v. Carefusion 303, 673 F.3d 1361, 1365 (Fed. Cir. 2012), one could argue that because the exact nature of the memory was not specified, the recitation of “memory” provides no more structure than the function itself.  Thus, this claim element is also invalid.  However, it is likely that a judge would instead follow the logic of will follow of  In re Katz Interactive Call Processing Patent, 639 F. 3d 1303 (Fed. Circ. 2011) to hold that the function is generally well known and is of the type performed by a general purpose computer.  So, the structure in this situation is adequately disclosed because it is such a well known element.

Hence, because computer memory is so well known, the recitation of the memory of the central processor may be enough structure to satisfy the “public notice function” of 35 § 112 ¶ 2.  So, if a court takes this view, the court would hold that this claim element is definite, and therefore, the claim element would be considered valid.  Of course, this does not mean that the entire claim is valid.  If there is only one invalid claim element, then the entire claim is invalid.