By Jason Rantanen
In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011)
Panel: Newman, Lourie, Bryson (author)
In addition to the discussion of complex patent litigation management procedures, summarized yesterday, In re Katz is also notable for its analysis of the indefiniteness of computer processing-type means plus function elements.
The patents at issue relate to interactive call processing and conferencing systems. Ten of the selected claims include "means for processing"-type limitations. For example, claims 96, 98, and 99 of the asserted '863 patent recite a "means for processing at least certain of said answer data signals." Applying 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), the district court found the claims indefinite because the specifications disclosed only general purpose processors without disclosing any of the algorithms used to perform the claimed functions.
The Federal Circuit agreed with the district court's analysis of three claims. Under Federal Circuit precedent, "a computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm." Slip Op. at 18, citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005). "[B]y claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the 'overbreadth inherent in open-ended functional claims,' … in violation of the limits Congress placed on means-plus-function claims in section 112, paragraph 6." Slip Op. at 19 (internal citation omitted). Thus, claims 21 and 33 of the '551 patent and claim 13 of the '065 patent, which claim a “processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data” but do not disclose an algorithm that corresponds to the “based on a condition coupling an incoming call to the operator terminal” function are invalid for indefiniteness.
The CAFC reached the opposite result on the remaining seven claims – not on the ground that the patent disclosed the requisite algorithms, but on the basis that no algorithm was necessary because the claim elements may simply claim a general process computer:
[i]n 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.
Slip Op. at 20-21.
The CAFC also reviewed the district court's grant of summary judgment on other issues of indefiniteness, as well as written description, obviousness, claim construction, and noninfringement, largely affirming. Of these issues, patent litigators may want to take note of the court's comment that when dealing with written description issues it is permissible for the court to construe claims whose meaning has not been placed in dispute, "as claim construction is inherent in any written description analysis." Slip Op. at 27. Using this seemingly innocuous statement, the CAFC rejected Katz's argument that it was denied the opportunity to demonstrate specification support or proffer expert testimony on the written description issue because it "should have been clear to Katz that the construction of the claims was important to the written description analysis."