Aristocrat Technologies Australia v. Multimedia Games (CAFC 07-1375)

Aristocrat asserted 4,817,951, which "claims a machine similar to a slot machine that provides a paperless version of an instant lottery."

Multimedia filed a motion for summary judgment arguing that claim 1 was invalid for indefiniteness because the specification of the patent failed to disclose necessary structure corresponding to several of the means-plus-function limitations. The district court agreed with Multimedia and concluded that the claims were invalid as indefinite... The court concluded that because a person of ordinary skill in the art could not identify structure corresponding to the functions to be performed by the recited means, such a person could not determine the meaning of the claims.

Aristocrat appealed.

"Claim construction of a means-plus-function limitation includes two steps. First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs that function." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006) (citations omitted). "The review of indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law without deference." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed. Cir. 2005).

We conclude that genuine issues of material fact exist concerning whether one skilled in the art of computer programming would identify structure in the specification associated with the various asserted claim limitations, thereby precluding summary judgment, and we thus reverse the district court's summary judgment order.

The appeals court then provided guidance for parameters of claim interpretation. U.S.C. § 112, ¶ 6 covers means-plus-function claims, which the asserted claim was. Indefiniteness under U.S.C. § 112, ¶ 2 revolves upon what one "skilled in the art would understand," which the district court will need to define on remand, as well as the relevant art, dependent upon factual determination.

[T]he specification must disclose some structure for a means-plus-function limitation. See Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) ("In sum, while it is true that the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure. Stated differently, the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.") (citation omitted); In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) ("[I]f one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language."). Whether a specification discloses adequate structure corresponding to a means-plus-function limitation is determined from the viewpoint of one of ordinary skill in the art: "[I]t is well-established that the determination whether a claim is invalid as indefinite 'depends on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the specification.'" Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (quoting N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579, (Fed. Cir. 1993)). That is what needs to be established by evidence on remand.

The law does not require that structure be explicitly identified as long as a person of ordinary skill in the art would understand what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999) (quoting with approval a proposed Supplemental Examiner Guideline stating that the "written description does not have to explicitly describe the structure . . . corresponding to a means(or step-) plus-function limitation to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112 ¶ 2"). We have held that a computer was the intended structure even when it was not expressly recited. For example, in In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir. 1997), we concluded that although the specification did not use the "magic word 'computer,'" a general or special purpose computer was clearly the structure intended to "receive[] digital data, perform[] complex mathematical computations and output[] the results to a display." See also, Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337, 1347 (Fed. Cir. 2002) ("Under our case law interpreting § 112, ¶ 6, knowledge of one skilled in the art can be called upon to flesh out a particular structural reference in the specification for the purpose of satisfying the statutory requirement of definiteness.").