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In support of the contention that it is not necessary to disclose a particular algorithm in order to disclose sufficient structure for a means-plus-function limitation in a computer-implemented invention, Aristocrat relies primarily on In re Dossel, 115 F.3d 942 (Fed. Cir. 1997). Aristocrat argues that the application in Dossel did not disclose a particular algorithm, and that the court held the disclosure sufficient even though the application stated, with respect to the performance of one of the claimed functions, that “[k]nown algorithms can be used for this purpose.”

The means-plus-function limitation at issue in Dossel was a “means for reconstructing the current distribution” on the surface of an element inside a biological object, such as on the surface of a tumor inside a human brain. The application stated that the reconstruction unit would reconstruct the density of the current at various points on that surface from the values of the magnetic flux density at corresponding pixels at the same time. See U.S. Patent No. 5,885,215, col. 4, ll. 6-10 (the patent that issued from the Dossel application). The application explained that “[k]nown algorithms can be used for this purpose.” Id., col. 4, ll. 10-11. The application then provided the particular equation by which the relationship between the values of magnetic flux density and current density could be described in matrix form, id., col. 4, ll. 12-15, and it described in great detail the components of that equation, id., col. 4, ll. 16-55. Accordingly, while providing a detailed explanation of how the claimed device would perform the claimed function, the specification left the mathematical techniques used to solve the recited equations to persons of ordinary skill in the art. That is what this court referred to when it stated that the application stated “that ‘known algorithms’ can be used to solve standard equations which are known in the art.” Dossel, 115 F.3d at 946.

From the context and from reviewing the application, it is clear that the Dossel court used the term “algorithm” in a narrow sense, referring to particular well-known mathematical operations that could be used to solve the equations disclosed in the application. Far from supporting Aristocrat’s claim that a reference to a general purpose computer with “appropriate programming” discloses sufficient structure for section 112 paragraph 6, the Dossel case provides an example of an extremely detailed disclosure of all information necessary to perform the function, except for basic mathematical techniques that would be known to any person skilled in the pertinent art.

Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for means-plus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ’102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6. Although the examples given in the ’102 patent might enable one of ordinary skill to make and use the invention, they do not recite the particular structure that performs the function and to which the means-plus-function claim is necessarily limited.

Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made clear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

For example, in Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999), the court embraced the proposition that “consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.” 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. The court in Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953 (Fed. Cir. 2007), put the point this way: “The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure.” Discussing Atmel, the court in Biomedino stated:

In Atmel, it was not the fact that one skilled in the art was aware of known circuit techniques that resulted in a conclusion that sufficient structure was recited. Rather, it was the inclusion in the written description of the title of [a technical article] which itself described the structure for a “known circuit technique.” Expert testimony was used to show what the title of the article would convey to one skilled in the art—in this case it was the “precise structure of the means recited in the specification.” . . . The expert’s testimony did not create or infer the structure. Next Page ->

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