“A description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.”
Background / Facts: The patent being asserted here is directed to the monitoring of conditions affecting, or behavior reflecting, a vehicle driver’s sleepiness and the issuing of a warning to the driver before the driving is unduly impaired. The claims contain a “computational means” element that is undisputedly subject to the requirements of 35 U.S.C. § 112(f) for claims to means for performing specified functions. In support of this means-plus-function element, the patentee points to Table 10 of the disclosure, which is entitled “Sleep Propensity Algorithm – Definition” and contains a list of factors that the patentee insists can be combined in any suitable mathematical fashion (even though shown as simple addition).
Issue(s): Whether such a generic algorithm satisfies the definiteness requirements of 35 U.S.C. § 112(b) for the underlying algorithm of computer-related means-plus-function claiming under 35 U.S.C. § 112(f).
Holding(s): No. Fundamentally, the court acknowledged the tension between claim breadth on the one hand to capture an accused infringer and specificity on the other hand to support adequate corresponding structure, but found that in this case “[t]hat position, however, fails in the necessary attempt to steer a course that permits proof of infringement yet avoids invalidity.” In essence, under the broad interpretation put forward by the patentee, the court found that “Table 10 identifies factors that may be related to driver drowsiness, but there is no disclosure of even a single concrete relationship between the various factors that are used to compute an outcome to warn of driver drowsiness.” A generic disclosure that “equally covers all ways of taking into account the listed variables, or some subset of the variables, that a skilled artisan would find appropriate … leaves the disclosure without an algorithm whose terms are defined and understandable.”