Uniloc v. Sega (Fed. Cir. 2017) (non-precedential)
Uniloc’s U.S. Patent No. 5,490,216 claims priority to two Australian provisional patent applications. However, the ‘216 patent also includes some amount of new matter.
The ‘216 patent covers a software registration system that uses a particular algorithm at the game-system to create to create a ‘local’ unique ID. The same algorithm is also run on the registration-server to create a ‘remote’ unique ID. If the IDs match then the software license is confirmed.
The algorithm is claimed as a “unique ID generating means” and the PTAB identified only one algorithm in the patent specification to serve as the ‘structure’ for the means-plus-function construction.
The algorithm, in this embodiment, combines by addition the serial number 50 with the software product name 64 and customer information 65 and previous user identification 22 to provide registration number 66
Since that algorithm was not disclosed in the provisional filings, the PTAB found that the patent at issue was not entitled to the priority claim. And, without that priority date, intervening prior art invalidated the claims at issue.
On appeal, the patentee argued that the PTAB applied an incorrect standard for determining priority. Notably, priority is not based upon whether a means-plus-function claim is properly drafted under 35 U.S.C. 112p6. Rather, under 35 U.S.C. 120, a priority claim is proper so long as the provisional applications disclose the invention as required by “the first paragraph of section 112.”
According to the patentee, 112p6 demands a narrow ‘myopic’ quest in search for specific structure. On the other hand, the 112p1 priority quest asks whether the prior filings ‘reasonably convey … possession’ Ariad.
On appeal, the Federal Circuit rejected the patentee’s argument – holding that for means-plus-function claims, the priority analysis does boil down to the search for specific structure — noting that the original disclosure must “describe the invention, with all its claimed limitations.” Lockwood. Since nothing in the provisional applications was sufficient to support the “structure” requirement of 112p6, the priority claim also failed.
Although the Federal Circuit does not state this expressly, the holding here is basically that, in addition to being indefinite, a patent claim also fails written description when it includes a means-plus-function limitation without disclosing a specific structural embodiment that performs the claimed function.
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This is a case where no sufficient structure (here, algorithm) was disclosed in the priority documents; I wonder what would be the result if one structure was disclosed priority document, but more were added in the non-provisional application.