Superficially, “means plus function” claims are wonderfully broad. Such claims describe a function and claim an unspecified “means” for accomplishing that function. Thus, they appear to cover any structure which performs the recited function. Well, they DON’T! The Courts have repeatedly handed down decisions which should have made this abundantly clear; but, some folks have not gotten the message. (Sybase, Inc. v. Vertica Systems, Inc.)
Sybase sued for infringement of a patent directed to “data storage format and arrangement within a database to facilitate retrieval of data on an ‘analytical’ basis rather than a ‘record’ basis.” Claim 16 of the patent-in-suit contained the term “means for creating a vertical partition for each and every column of the database table, each vertical partition having data values for only a single column of the database table.”
It is well established that a “means-plus-function limitation is indefinite if the specification does not disclose sufficient structure such that one skilled in the art would understand the structure as adequate to perform the recited function … the structure must include all structure that actually performs the recited function ... In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm … Disclosure of a general purpose computer without a corresponding algorithm renders the means-plus-function claim indefinite.” “Indefinite” is legalspeak for “fatally defective.”
Sybase argued that it had met this requirement by disclosing, inter alia, a “table-level object.” Not good enough! The Court held that “[t]he specification merely provides a non-specific reference to a software tool and fails to disclose the algorithm being executed to break down the data … by failing to describe the means by which the ‘table-level object’ will break down the data, Sybase has in effect attempted to capture any possible means for achieving that end. This is the exact ‘pure-functional claiming’ that [the patent statute] is intended to prevent.” Claim 16 is indefinite; victory goes to the defendant.
THE LESSON TO BE LEARNED: If you claim a process performed by a computer, DISCLOSE THE ALGORITHM performed by the computer.
Hypo: Claim includes "means for multiplying a first factor by a second factor to produce a product". Is the claim indefinite if there's no disclosure of an "algorithm" for the multiplication?
I don't see any exception in Aristrocrat/WMS Gaming for "no algorithm required if function is simple enough". In fact, I'm not aware of a single Fed. cir. case where the "no algorithm required" argument won.
IMHO, there should definitely be such an exception since this is an absurd result.
Actually, IMHO, WMS Gaming is based on ridiculous reasoning and should be overruled.
Karen G. Hazzah
Patent Prosecution Blog "All Thing Pros"