In affirming the grant of summary judgment that all claims of the patent-in-suit are indefinite, the Federal Circuit held that computer-implemented means-plus-function claim terms are indefinite where no algorithm is disclosed and the claimed function requires a specially-programmed computer. Under cases such as WMS Gaming, a computer-implemented means-plus-function claim term is definite only if the specification discloses an algorithm running on a general computer sufficient to perform the claimed function. In this case, however, it was undisputed that the patent specification disclosed no algorithms. The patentee thus contended that the structure disclosed in the specification for performing the claimed functions was a microprocessor on a general computer and contended that the Katz exception applies, i.e., that a standard microprocessor can serve as sufficient structures for “functions [that] can be achieved by any general purpose computer without special programming.” In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). In Katz, claim terms involving basic “processing,” “receiving,” and “storing” functions were not necessarily indefinite because a general purpose computer need not be specially programmed to perform the recited function. Katz does not apply where “special programming” is required, i.e., any functionality that is not “coextensive” with a microprocessor or general purpose computer. Here, the Federal Circuit agreed with the district court that the narrow Katz exception was inapplicable, because the claimed functions required special programming and therefore the means-plus-function claim terms were indefinite due to the specification failing to disclose structure capable of performing the claimed functions.
Eon Corp. IP Holdings, Inc. v. AT&T Mobility LLC, Case No. 2014-1392, -1393 (May 6, 2015); Opinion by: Prost, joined by Newman and Bryson; Appealed From: District Court for the District of Delaware, Andrews, J. Read the full opinion here.