Elan Microelectronics Corporation v. Apple, Inc.

Filing 431

Declaration of NATHAN GREENBLATT in Support of 430 MOTION for Summary Judgment OF INDEFINITENESS OF CLAIMS 24, 26 AND 30 OF U.S. PATENT NO. 5,825,352 filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J)(Related document(s) 430 ) (Greenblatt, Nathan) (Filed on 9/14/2011)

Exhibit D

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This case was not selected for publication in the
Federal Reporter.

disclosure of structure without algorithm.
Affirmed.
West Headnotes

Not for Publication in West's Federal Reporter See
Fed. Rule of Appellate Procedure 32.1 generally
governing citation of judicial decisions issued on or
after Jan. 1, 2007. See also Federal Circuit Rule
32.1 and Federal Circuit Local Rule 32.1. (Find
CTAF Rule 32.1)
United States Court of Appeals,
Federal Circuit.
ENCYCLOPAEDIA BRITANNICA, INC.,
Plaintiff-Appellant,
v.
ALPINE ELECTRONICS, INC. and Alpine Electronics of America, Inc., Defendants-Appellees,
and
Denso Corporation and Toyota Motor Sales,
U.S.A., Inc., Defendants-Appellees,
and
American Honda Motor Co., Inc., Defendant-Appellee,
and
Garmin International, Inc., Defendant-Appellee.
No. 2009-1087.
Dec. 4, 2009.
Background: Owner of patents directed to computerized multimedia search system with multiple
separate and independent entry paths for searching
and retrieving textual and graphical information
filed infringement action against manufacturers and
sellers of computerized navigation systems. The
United States District Court for the Western District of Texas, Lee Yeakel, J., 2008 WL 7328271,
entered summary judgment of invalidity, and owner
appealed.
Holding: The Court of Appeals, Prost, Circuit
Judge, held that computer-implemented meansplus-function limitations of claim lacked sufficient

Patents 291

101(8)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(8) k. Functions, advantages or
results of invention. Most Cited Cases
Computer-implemented
means-plus-function
claims, for patent directed to computerized multimedia search system with multiple separate and independent entry paths for searching and retrieving
textual and graphical information, lacked sufficient
disclosure of structure without algorithm used to
perform claimed functions, and thus patent was invalid for indefiniteness, even if specification disclosed to one of ordinary skill in art class of algorithms whereby textual information and related
graphical information could be retrieved from database, and computer function being performed was
well known, where specification failed to disclose
anything more than computer designed to perform
particular function. 35 U.S.C.A. § 112.
Patents 291

328(2)

291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original utility. Most Cited
Cases
5,241,671. Invalid.
Patents 291

328(2)

291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original utility. Most Cited

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Cases
7,051,018. Cited.
*390 Appeal from the United States District Court
for the Western District of Texas in case no.
05-CV-359, Judge Lee Yeakel.David G. Wille,
Baker Botts LLP, of Dallas, TX, argued for
plaintiff-appellant. With him on the brief were Matthew A. Hayenga, Scott F. Partridge and Michael
Hawes, of Houston, TX, and Kevin M. Sadler, of
Austin, TX.
Christopher A. Harkins, Brinks Hofer Gilson & Lione, of Chicago, IL, argued for defendants-appellees Alpine Electronics, Inc., et al. With him on
the brief were Gary M. Ropski, Cynthia A. Homan,
and Laura Beth Miller.
Paul R. Steadman, Kirkland & Ellis LLP, of Chicago, IL, argued for all defendants-appellees DENSO
Corporation., et al., and for all appellees. With him
on the brief was Shira J. Kapplin.
John T. Johnson, Fish & Richardson P.C., of New
York, NY, for defendant-appellee American Honda
Motor Co., Inc. With him on the brief were Thomas
S. McClenahan, of Minneapolis, MN, and Robert E.
Hillman, of Boston, MA.
Raymond W. Mort, III, Shook, Hardy & Bacon
LLP, of Kansas City, MO, for defendant-appellee
Garmin International, Inc. With him on the brief
were George B. Butts and Courtney Paige Thornton
Stewart, DLA Piper LLP (US), of Austin, TX.
Before LOURIE, FRIEDMAN, and PROST, Circuit
Judges.
PROST, Circuit Judge.
**1 Appellant Encyclopaedia Britannica, Inc.,
(“Britannica”) is the assignee of U.S. Patent No.
5,241,671 (“'671 patent”), which is directed to a
computerized multimedia search system with multiple separate and independent entry paths for

searching and retrieving textual and graphical information. The Appellees, Alpine Electronics, Inc.,
Alpine Electronics of America, Inc., Denso Corp.,
Toyota Motor Sales, U.S.A., Inc., American Honda
Motor Co., Inc., and Garmin International, Inc.
(“Garmin”) (collectively, “Appellees”), manufacture and sell computerized navigation systems. Britannica brought this infringement action against Appellees in the United States District Court for the
Western District of Texas. On summary judgment,
the district court held claim 1, the only independent
claim, of the '671 patent invalid for indefiniteness.
The district court then dismissed Britannica's infringement claims with respect to a second patent,
U.S. Patent No. 7,051,018 (“'018 patent”), without
*391 prejudice. Britannica now appeals. For the
reasons set forth below, we affirm.
BACKGROUND
The '671 patent was prosecuted for four years prior
to issuance by the U.S. Patent and Trademark Office (“PTO”). After a nine year reexamination that
was initiated by the Commissioner of Patents, the
PTO was reversed and ordered to grant the '671 patent in a civil action in the United States District
Court for the District of Columbia pursuant to 35
U.S.C. § 145.
The '671 patent provides a user-friendly way to
search a multimedia database with textual and
graphical information. The invention enables users
to find and obtain information quickly and efficiently, such as textually searching for information
by entering search terms or by browsing a list of
text items and selecting an item for which the user
would like more information, or graphically searching for information by moving around a map. The
entry paths are interrelated “such that textual information is fully accessible from the graphical
entry paths and graphical information is fully accessible from the textual entry paths” without performing separate searches. For example, when a
textual search is conducted, the system provides access to textual information of interest as well as any

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related graphical information available, and vice
versa. The user can click on the icon or label to retrieve the related information.
Garmin filed a motion for summary judgment of invalidity alleging that two means-plus-function elements, i.e., “accessing means” and “first retrieving
means,” in claim 1 of the '671 patent were indefinite under 35 U.S.C. § 112 ¶ 2. Claim 1, as amended
during the reexamination proceedings, recites:
A computer search system for retrieving information, comprising:
storing means for storing interrelated textual information and graphical information; said storing
means including at least one database;
means for interrelating said textual and graphical
information;
**2 a plurality of independently accessible and
separately and independently usable entry path
means for searching said stored interrelated textual and graphical information, said entry path
means comprising:
textual browse entry path means for textually
browsing said textual information;
textual search entry path means for textually
searching said textual information [and for retrieving interrelated graphical information to said
searched text]; and
graphics search entry path means for graphically
searching said graphical information [and for retrieving interrelated textual information to said
searched graphical information];
selecting means for providing a menu of said
plurality of entry path means for selection;
each of said textual search entry path means and
graphics search entry path means including a
processing means for executing inquiries
provided by a user in order to search said textual

and graphical information through each of said
selected entry path means;
each of said textual browse entry path means including means for allowing a user to select textual information from a predetermined list of textual information;
each of said textual search entry path means and
graphics search entry path means including an
indicating means for indicating a pathway that
*392 accesses information related in one of said
independently accessible entry path means to information accessible in another one of said entry
path means;
each of said textual search entry path means and
graphics search entry path means including an
accessing means for providing access to said related information in said another entry path
means; [and]
said textual search entry path means including
first retrieving means for retrieving said textual
information and interrelated graphical information to said searched textual information;
said graphics search entry path means including
second retrieving means for retrieving said
graphical information and interrelated textual information to said searched graphical information; and
output means for receiving search results from
said processing means and said related information from said accessing means and for providing
said search results and received information to
such user.
(alterations in original). The district court held that
where the disclosed structure is a computer, programmed to carry out the respective function, a specific algorithm must be disclosed in the specification to provide corresponding structure. The court
found that the specification of the '671 patent did
not disclose such an algorithm for either of the
claim terms “accessing means” or “first retrieving

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means.” Therefore, the court explained that claim 1
lacked sufficient corresponding structure for both
of these means-plus-function elements, which
rendered the claim indefinite under 35 U.S.C. § 112
¶ 2.
After the district court granted Garmin's summary
judgment motion and issued a final order, the court
amended the final judgment. The amended order
dismissed without prejudice Britannica's infringement claims with respect to the '018 patent, which
had been added in an amended complaint. After the
district court issued a second amended final judgment, which dismissed Appellees' counterclaims,
the patent owner appealed.
**3 We have jurisdiction under 28 U.S.C. §
1295(a)(1).
DISCUSSION
On appeal, the parties agree that the two meansplus-function elements at issue in claim 1 of the '
671 patent, namely “accessing means” and “first retrieving means,” are governed by 35 U.S.C. § 112 ¶
6. Britannica argues that these elements are not indefinite under 35 U.S.C. § 112 ¶ 2 for failure to disclose an algorithm. Further, Britannica asserts that
the district court judge abused his discretion when
he dismissed sua sponte its infringement claims relating to the '018 patent.
I. Indefiniteness
Indefiniteness is an issue of patent claim construction and a question of law that we review de novo.
Cordis Corp. v. Boston Scientific Corp., 561 F.3d
1319 (Fed.Cir.2009).
Means-plus-function claim limitations “shall be
construed to cover the corresponding structure, material, or acts described in the specification and
equivalents thereof.” 35 U.S.C. § 112 ¶ 6. “During
claim construction, the court must identify the
claimed function and determine the corresponding

structure disclosed in the specification.” IMS Tech.,
Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430
(Fed.Cir.2000). For computer-implemented inventions with means-plus-function claiming, the particular structure disclosed *393 in the specification
must be more than the general purpose computer or
microprocessor. Aristocrat Techs. Austl. Pty Ltd. v.
Int'l Game Tech., 521 F.3d 1328, 1333
(Fed.Cir.2008) (“ Aristocrat II ”).
As “general purpose computers can be programmed
to perform very different tasks in very different
ways, simply disclosing a computer as the structure
designated to perform a particular function does not
limit the scope of the claim to ‘the corresponding
structure, material, or acts' that perform the function, as required by section 112 paragraph 6.” Id.
Thus, we require “that the patentee disclose particular structure in the specification and that the scope
of the patent claims be limited to that structure and
its equivalents to avoid pure functional claiming.”
Id. Where “the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general
purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm.” Id. (quoting WMS Gaming, Inc. v. Int'l
Game Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999)).
Indeed, the corresponding structure for such claims
is the algorithm disclosed in the specification. See
id.; Harris Corp. v. Ericsson Inc., 417 F.3d 1241,
1249 (Fed.Cir.2005) (citing WMS Gaming, 184
F.3d at 1348-49). “[T]he patent must disclose, at
least to the satisfaction of one of ordinary skill in
the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6.” Finisar Corp. v.
DirecTV Group, Inc., 523 F.3d 1323, 1340
(Fed.Cir.2008); see Aristocrat Techs. Austl. Pty
Ltd. v. Multimedia Games, Inc., 266 Fed.Appx.
942, 946 (Fed.Cir.2008) ( “ Aristocrat I ”). If the
algorithm is not adequately disclosed in the specification, the claim is invalid for indefiniteness. 35
U.S.C. § 112 ¶¶ 2, 6; Aristocrat II, 521 F.3d at
1338.

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**4 We turn first to Britannica's argument that the
means-plus-function element “first retrieving
means” in claim 1 of the '671 patent is not indefinite. Britannica asserts that the corresponding structure for this element is a general purpose computer
performing the recited function of “retrieving said
textual information and interrelated graphical information to said searched textual information.”
Britannica's arguments suggest that the disclosure
of corresponding structure within the patent is sufficient, regardless of whether it is implicit, explicit,
or not required. Britannica contends that the specification is not indefinite with respect to this element because it: (1) implicitly discloses a class of
algorithms, to a person of ordinary skill in the art,
corresponding to the recited function, and implicit
disclosure of structure is sufficient; (2) discloses, at
a minimum, a one-step algorithm for the recited
function; and (3) need not disclose an algorithm
where the computer function being performed is
well known. We address each point in turn.
The “first retrieving means” is a computer program
or function capable of retrieving textual and graphical information from a database and equivalents
thereof. Britannica argues that the specification discloses sufficient corresponding structure for this
element because a person of ordinary skill in the art
would recognize that the specification inherently
discloses a class of algorithms for retrieving this information from a database on a general purpose
computer. We disagree.
As a preliminary matter, we have held that where
the disclosed structure in a means-plus-function
claim is a computer programmed to perform a function, the structure is a special purpose computer
programmed to perform the disclosed algorithm,
not a general purpose computer. Id. at 1333; WMS
Gaming, 184 F.3d at 1349. Furthermore, we have
explained *394 that an assertion, such as Britannica's, even where supported by evidence showing
that one of ordinary skill in the art could build the
device claimed in the patent based on the disclosure
in the specification, conflates the disclosure re-

quirement of § 112 ¶ 6 and the enablement requirement of § 112 ¶ 1. Aristocrat II, 521 F.3d at 1336.
“The understanding of one of skill in the art does
not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function
claim terms.” Lucent Techs., Inc. v. Gateway, Inc.,
543 F.3d 710, 719 (Fed.Cir.2008) (citations omitted). “It is not enough for the patentee simply to
state or later argue that persons of ordinary skill in
the art would know what structures to use to accomplish the claimed function.” Aristocrat II, 521
F.3d at 1337. Indeed, where the patent, like the '671
patent, does not disclose an algorithm to perform
the claimed function, it does not disclose sufficient
corresponding structure. See id. at 1333; Harris,
417 F.3d at 1249 (citing WMS Gaming, 184 F.3d at
1348-49).
**5 Britannica's first argument also encompasses
its contention that there is sufficient corresponding
structure when the specification implicitly discloses
to a person of ordinary skill in the art a class of algorithms. In support, Britannica relies on In re Dossel, 115 F.3d 942 (Fed.Cir.1997), and AllVoice
Computing PLC v. Nuance Communications, Inc.,
504 F.3d 1236 (Fed.Cir.2007). As evidence that the
specification of the '671 patent has such an implicit
disclosure, Britannica cites to its expert, Dr. Nathaniel Polish, who opined that interrelated information is retrieved from a database and “[b]y indicating that interrelated information is stored in a database and retrieved in a database, the specification
discloses to one of ordinary skill in the art a class of
algorithms whereby textual information and related
graphical information could be retrieved from a
database.”
However, the cases upon which Britannica relies
are distinguishable here because algorithms were in
fact disclosed in those cases. For example, in Dossel, the specification disclosed known algorithms
even though it did not explicitly mention a computer. 115 F.3d at 946. Similarly, in AllVoice, the
specification disclosed a sufficient algorithmic
structure. 504 F.3d at 1245-46. In sum, Dossel and

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AllVoice are consistent with our holding, in Aristocrat II, that means-plus-function limitations for
computer-implemented functions require that some
algorithm be disclosed in the specification. Aristocrat II, 521 F.3d at 1337. It is the sufficiency of the
algorithm that may be determined by one of ordinary skill in the art. Id. Therefore, claim 1 of the '671
patent must explicitly disclose an algorithm in the
specification for performing the claimed function
for a computer-implemented invention to have sufficient corresponding structure for the “first retrieving means” limitation. Such an algorithm is not disclosed here because the specification fails to disclose anything more than a computer designed to
perform a particular function-retrieving textual and
graphical information from a database.
Second, Britannica contends that the specification
does sufficiently disclose, at a minimum, a
“one-step” algorithm for performing the recited
function of retrieving information from a database.
Britannica argues that “the specification discloses
the retrieval of information performed by a computer.” In Aristocrat II, we reiterated that the
“corresponding structure for a § 112 ¶ 6 claim for a
computer-implemented function is the algorithm
disclosed in the specification.” Id. at 1333 (citations
omitted). Further, we explained that the patentee
must disclose such structure in the specification and
the scope of the patent claims must be limited to
that structure, and its equivalents, to avoid pure
functional claiming. Id. Britannica's purported*395
“one-step” algorithm, however, is not an algorithm
at all. Rather, it is simply a recitation of the claimed
function. At best, the specification for the '671 patent discloses only the functional result claimed by
this limitation. Neither the written portions of the
specification, nor the specification's figures, disclose any structure or algorithm employed by the
system. Thus, Britannica's proposed one-step algorithm amounts to pure functional claiming, which
does not comply with the disclosure requirement of
§ 112 ¶ 6. Id. Indeed, it is irrelevant that one of ordinary skill in the art would understand the specification to disclose a “one-step algorithm” for

performing the function and teaching how to implement the claimed device on a computer, where, as
here, the specification does not disclose a program
or algorithm. Accordingly, this argument too fails.
**6 Finally, Britannica asserts, in the alternative,
that the specification need not disclose any algorithm so long as the computer function being performed is well known. Britannica asserts that we
should not extend Aristocrat II to well-known computer functions, such as retrieving data from a database, because the disclosure of a general purpose
computer to perform these functions is sufficient to
satisfy § 112. Contrary to Britannica's contention,
we are not broadening Aristocrat II here. Rather,
we are applying our previous holding that when a
means-plus-function limitation is a computer programmed with software to carry out the claimed
function, a recitation of the corresponding algorithm is required to provide sufficient disclosure
of structure under § 112 ¶ 6 to avoid indefiniteness
under § 112 ¶ 2. See id. at 1337-38.
Indeed, it is well settled that the specification must
disclose “the algorithm that transformed the general
purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm,’ ” regardless of its simplicity. Id. at 1338
(quoting WMS Gaming, 184 F.3d at 1349). Because
claim 1 of the '671 patent fails to explicitly disclose
any algorithm or any class of algorithms in the specification for performing the claimed function for a
computer-implemented invention, it lacks sufficient
corresponding structure for the “first retrieving
means” limitation. 35 U.S.C. § 112 ¶ 6. Thus, the
FN1
patent is invalid for indefiniteness.
35 U.S.C. §
112 ¶ 2.
FN1. In light of our determination that the
specification fails to provide sufficient
structure for the “first retrieving means”
limitation, we need not reach the issue of
whether the “accessing means” limitation
in claim 1 also renders the patent indefinite
under § 112 ¶ 6.

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II. Dismissal of Unrelated Claims
We review a dismissal without prejudice of a cause
of action for infringement under the law of the pertinent regional circuit. L.E.A. Dynatech, Inc. v. Allina, 49 F.3d 1527, 1530 (Fed.Cir.1995). The Fifth
Circuit, the pertinent regional circuit here, reviews
a dismissal without prejudice for abuse of discretion. See Ikospentakis v. Thalassic S.S. Agency, 915
F.2d 176, 177 (5th Cir.1990). A reasonable likelihood of prejudice supports a finding of abuse of
discretion. United States v. Simmons, 374 F.3d 313,
320 (5th Cir.2004).

ent is invalid for indefiniteness. We conclude that it
was not abuse of discretion to dismiss the '018 patent claims without prejudice.
C.A.Fed. (Tex.),2009.
Encyclopaedia Britannica, Inc. v. Alpine Electronics, Inc.
355 Fed.Appx. 389, 2009 WL 4458527 (C.A.Fed.
(Tex.))
END OF DOCUMENT

Britannica argues that the district court abused its
discretion when it dismissed without prejudice the '
018 patent claims from the instant action sua sponte
and cited no legal authority. Britannica contends
that it could be unfairly prejudiced because Appellees could pursue a laches defense.
After the district court entered the judgment dismissing the claims arising under the '018 patent, it
considered Britannica's arguments, by way of a motion to amend, that dismissal was improper and
could *396 harm Britannica. The district court, acting within its broad discretionary powers to control
its docket, determined that dismissal of these unrelated '018 patent claims without prejudice was
“judicially efficient” and would “not unfairly prejudice” Britannica. After filing its notice of appeal
here, Britannica was granted leave and amended its
complaint to assert the '018 patent claims in a
pending case, case no. 06-CV-578, in the same district court, before the same district judge, and
against the same parties. Thus, because Britannica
has failed to show that there is a reasonable likelihood of harm, Britannica has not met the high
standard for demonstrating that the district court
abused its discretion here.
CONCLUSION
**7 For the reasons set forth above, we affirm the
district court's finding that claim 1 of the '671 pat-

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