This is another example of the perils of using means-plus-function claiming, especially for computer-implemented inventions. The specification must detail “how” a means element is implemented, and that “how” for software is the algorithm that transforms the general-purpose computer into the specially programmed computer being claimed. A black box software module that performs the stated function is not sufficient.
Background / Facts: The patent being asserted against Google here relates to facilitating advertising on multiple advertising outlets such as newspapers and websites by automatically formatting the ads to fit each publisher’s requirements and sending them out for publication. To send the ads out, the claims recite “means for transmitting.” The patentee acknowledges that the corresponding structure is software, not hardware, and points to its disclosed Presentation Generating Program (“PGP”) as accomplishing the transmitting.
Issue(s): Whether the patent is invalid for indefiniteness because it does not disclose a cognizable structure for the means plus function term “means for transmitting.”
Holding(s): Yes. The specification “contain[s] no explanation of how the PGP software performs the transmission function.” At most, the “specification discloses that the structure behind the function of transmitting is a computer program that transmits. Beyond the program’s function, however, no algorithm is disclosed. … [T]he PGP is simply an abstraction that describes the function to be performed. FM’s citation to the flow charts as sufficient structure is similarly unavailing because the charts also do not describe how the transmitting function is performed. … Furthermore, it is well established that proving that a person of ordinary skill could devise some method to perform the function is not the proper inquiry as to definiteness — that inquiry goes to enablement.”