The Katz exception to the algorithm rule permitting general-purpose processors to serve as the corresponding structure of computer-implemented means-plus-function elements for basic functions of a processor does not extend to complicated, customized computer software. Here, for example, various computer-implemented means-plus-function elements, such as “means establishing a first menu,” “means for causing selected themes to automatically display a second menu,” etc., were found to require disclosure of an algorithm rather than a generic microprocessor because they went beyond the basic functions of such a microprocessor, such as “receiving” data, “storing” data, and “processing” data. “[A] microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.” This would be a good case to consult and cite in response to an indefiniteness rejection asserted for a computer-implemented means-plus-function element, where a disclosed microprocessor may or may not provide corresponding structure.
Background / Facts: The patent being asserted here is directed to software embodied in a “local subscriber data processing station” (e.g., smartphone) that operates in tandem with a television to interconnect various interactive features of the television. The software allows actions such as “impulse purchase transactions with immediate payment,” audience participation voting, and sorting television programs by theme. The claims recite various computer-implemented means-plus-function elements, such as “means establishing a first menu,” “means for causing selected themes to automatically display a second menu,” etc. The parties agree that the functions claimed in the terms at issue are all performed by computer software, and that the only structure disclosed in the specification is a microprocessor, without any algorithms.
Issue(s): Whether, under the Katz exception to the algorithm rule, the described general-purpose microprocessor is sufficient to provide the corresponding structure of the computer-implemented means-plus-function claim elements in the absence of any disclosed algorithms.
Holding(s): No. In characterizing the Katz exception as “narrow,” the court explained that “a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself. [] Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient.” Accordingly, because “each of the eight claim terms at issue recite[s] complicated, customized computer software,” and “do[es] not recite basic functions of a microprocessor,” the patent’s disclosure of a microprocessor “does not lend sufficient structure to the means-plus-function terms at issue, and the [] patent’s claims are indefinite.”