“For” Interpreted as Must Perform v. Capable of Performing

Typhoon Touch v. Dell Inc., et al., Dkt. No. 2009-1589 (Fed. Cir. Nov. 4, 2011).

Typhoon sued Dell, Lenovo, San Due Ventures, Toshiba, Fujitsu, Panasonic, Apple, and HTC alleging infringement of US Pat. Nos. 5,379,057 and 5,675,362, each patent directed to a portable computer with touch screen. The appeals court reviewed the district courts finding of non-infringement and invalidity.

Claim 12 of the ‘057 patent is a representative claim, with terms in dispute emphasized:

A portable, keyboardless, computer comprising:

an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;

a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;

a processor coupled to said memory and said in-put/output device for executing said data collection application; and

an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said applica-tion generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries; and

a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.

Must Perform v. Capable of Performing. Typhoon argued that the district court erred in construing the claim term “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.” The district court found that the memory must perform the recited function.  Typhoon argued the district court was wrong and that an infringing device need only be capable of performing the recited function.  In other words, as long as the memory is capable  of being configured to (e.g. programmed to) store the data collection application, even if the memory is not so configured, the element is satisfied.

The Federal Circuit reviewed prior cases and noted that  “capable of” did not mean “might be later modified to perform that function.” It said that infringement may not be based on “a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.” Further the specification supported the district court’s construction.

Algorithm Adequately Disclosed. The district court found the term means for cross-referencing responses to said inquiries with possible responses from one of said libraries” was indefinite because the specification failed to adequately provide an algorithm for carrying out the means element.  The court noted that “a means-plus-function term is impermissibly indefinite under §112 ¶ 2 when the specification “simply describes the function to be performed, not the algorithm by which it is performed.”

The court provided that an algorithm in computer systems encompasses “in essence a series of instructions for the computer to follow” whether in mathematical formula, or a word description of the procedure, or shown in a flow chart. The court also observed that “[t]he preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step procedure for accom-plishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.’”

The court review the specification of the patents at issue and found that the following excerpt of the specifcation sufficiently disclosed an algorithm:

Cross-Referencing imports that, for each answer field, the entered response can be related to a library to determine if the response in the answer field is existent in the library. In other words, the answer information is cross-referenced against that specific library. If it is available in that library, then, corresponding to that library entry, an action is executed. For instance, the associated action can involve an overlay window that alerts the user of the fact of the match with the library entry, or dis-plays the contents of an information field stored in association with that entry in the memory.

The court affirmed on the issue of non-infringement and reversed on the issue of invalidity.

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