I commented in a prior blog on the lack of clarity in the patent law with respect to the patent eligibility of computer-implemented inventions. Recent cases reflect an even further tightening of the rules with respect to computer-implemented inventions and suggest that practitioners may need to reconsider the content that should be included in patent applications directed to such inventions.
Historically, the courts in the U.S. have held that “[t]he specification [of a patent] need not teach what is well-known in the art.” The rationale for these decisions seemed to make sense. Requiring a patent applicant to reiterate that which was well known in the field would simply increase the cost of preparing patent applications and would convey nothing new. As a consequence, it has been a common practice not to include subject matter that was well known in the field. Patent practitioners, at times, would expressly state that specific information was not being included because it was well known. Recent cases suggest that this practice needs to be revisited.
A Recent Case Invalidates Claims for Failing to Adequately Disclose an Algorithm for Performing a Claimed Function
The Court of Appeals for the Federal Circuit recently issued a decision in which it invalidated a patent as indefinite for failing to adequately disclose an algorithm employed in a computer-implemented invention. Triton Tech of Texas, LLC v. Nintendo of America, Inc., 111 USPQ2d 1396 (Fed. Cir. 2014). There was no dispute that algorithms for performing the claimed invention were well known. Nevertheless, the Court held the claims of the patent invalid as indefinite for failing to adequately disclose in the patent specification a specific algorithm for performing the well-known function.
How Means-Plus-Function Analysis Impacted the Case
The decision of the Court was directed to a claim element drafted in “means-plus-function” form. Claims written in “means-plus-function” form recite a means for performing a particular function without describing any structure to perform the function. While there is no structure recited in a claim element written in means-plus-function form, under the U.S. patent laws, an element of such a claim is construed to cover the corresponding structure described in the patent specification and equivalents thereof. The Court reasoned that because the patent specification did not disclose a specific algorithm for performing the claimed function, even though many such algorithms for performing this function were well known in the field, the patent failed to disclose any structure in the patent specification that corresponded to the claimed function and thus failed to meet the statutory requirement. Based on this logic, the court held the patent claims invalid as indefinite.
The Algorithms for Performing a Claimed Function Should be Disclosed in the Patent Specification for Computer-Implemented Inventions
To avoid the fate suffered by the patent owner in this recent case, the specific algorithms, steps and/or techniques employed in computer-implemented inventions should be disclosed in the patent specification, even in circumstances in which the disclosure involves subject matter that is considered well known in the art. This is particularly important in patent applications that include claims written in means-plus-function form.