Encyclopaedia Britannica, Inc. v. Alpine Electronics, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1087
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.
David G. Wille, Baker Botts LLP, of Dallas,Texas, argued for plaintiff-appellant.
With him on the brief were Matthew A. Hayenga, Scott F. Partridge and Michael Hawes, of
Houston, Texas, and Kevin M. Sadler, of Austin, Texas.
Christopher A. Harkins, Brinks Hofer Gilson & Lione, of Chicago, Illinois, 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, Illinois, 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, New York, for defendant-
appellee American Honda Motor Co., Inc. With him on the brief were Thomas S.
McClenahan, of Minneapolis, Minnesota, and Robert E. Hillman, of Boston,
Massachusetts.
Raymond W. Mort, III, Shook, Hardy & Bacon LLP, of Kansas City, Missouri, 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, Texas.
Appealed from: United States District Court for the Western District of Texas
Judge Lee Yeakel
2
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1087
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.
Appeal from the United States District Court for the Western District of Texas in case
no. 05-CV-359, Judge Lee Yeakel.
__________________________
DECIDED: December 4, 2009
__________________________
Before LOURIE, FRIEDMAN, and PROST, Circuit Judges.
PROST, Circuit Judge.
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 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
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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 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;
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;
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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
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 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.
2009-1087 4
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, the parties agree that the two means-plus-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 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
2009-1087 5
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. App’x 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.
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
2009-1087 6
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 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 requirement 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-
2009-1087 7
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).
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 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 AllVoice are
2009-1087 8
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 “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
2009-1087 9
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.
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
2009-1087 10
corresponding structure for the “first retrieving means” limitation. 35 U.S.C. § 112 ¶ 6.
Thus, the patent is invalid for indefiniteness. 1 35 U.S.C. § 112 ¶ 2.
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).
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 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
1
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.
2009-1087 11
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
For the reasons set forth above, we affirm the district court’s finding that claim 1
of the ’671 patent is invalid for indefiniteness. We conclude that it was not abuse of
discretion to dismiss the ’018 patent claims without prejudice.
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