For software patents including a computer-implemented means-plus-function limitation, the patent application or patent must disclose an algorithm or structure for performing the claimed function. This is to satisfy the definiteness requirement of 35 U.S.C. §112, second paragraph. The algorithm or structure need not be in any particular format but must simply be expressed as “any understandable terms including as a mathematical formula, in prose, or as a flowchart, or in any other manner that provides sufficient structure.”
In Augme Technologies v. Yahoo (Fed. Cir. 2014), the court invalidated Claims 19 and 20 of United States Patent No. 6,594,691 for being indefinite. In particular, Claims 19 and 20 recited a means for assembling said second server, said second computer readable code module. The patent owner contended that the specification disclosed an algorithm for assembling the second computer readable code module in Figure 5 and column 11, line 60–column 12, line 1 and column 4, lines 51–60 of United States Patent No. 6,594,691. Shown below are the actual figures and verbiage recited by the patent owner in support of definiteness.
The court explained that the verbiage in the specification explains that the “code assembler instructions” do the assembling and discloses inputs to and outputs from the code assembler instruction. However the specification is lacking any algorithm for how the second code module is actually assembled. Simply disclosing a black box that performs a recited function is not a sufficient explanation of the algorithm required to render the means–plus–function term definite. I provided the actual language so that you can decide for yourself and also see what more the courts are looking for in describing a software invention in a patent application.
The court is looking for something more than just a generic description as shown in the cut out text of the specification on the step of assembling the second code module. Rather, the court is looking for specific instructions on how the second code module is actually assembled. It cannot be merely that the second code module is assembled by “accessing” something. Merely accessing does not instruct someone how to assemble the second code module.
Claim sets should include a variety of types of claims. Some of the claims may contain means plus function limitations but should not be the sole means of protecting an invention. Understandably, the examiner allow only those claims with means plus function limitations but as a patent prosecutor that should not be the end goal if possible. With this said, there are times when the means plus function limitation is rather useful in claiming the invention. For example, when there are multiple embodiments and drafting an independent claim for each embodiment would be cost prohibitive.
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