ANTICIPATION REQUIRES THE PRESENCE IN A SINGLE PRIOR ART DISCLOSURE OF ALL ELEMENTS OF A CLAIMED INVENTION ARRANGED AS IN THE CLAIM

Net Moneyin, Inc., v. Verisign, Inc., [2007-1565] (October 20, 2008) [LINN, Clevenger, Moore] The Federal Circuit affirmed the district court’s holding of the asserted claims of U.S. Patent Nos. 5,822,737 and 5,963,917 invalid under 35 U.S.C. § 112 ¶ 2 because they contain limitations in means-plus-function format without identifying corresponding structure. The Federal Circuit reversed a finding of validity under 102(a).
DISCUSSION: The Federal Circuit said that a patent applicant who employs means-plus-function language “must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” The Federal Circuit said that to avoid purely functional claiming in cases involving computer-implemented inventions, it had “consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” The Federal Circuit explained that because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to 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.” Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function. Since there was no dispute in this case that the specification fails to disclose an algorithm by which a general purpose bank computer performs the function, the district court correctly concluded that claims 1, 13, and 14 are indefinite under 35 U.S.C. § 112 ¶ 2. As to invalidity under 102(a), the district court found the claimed invention anticipated based upon a single reference, but taking individual features from separate examples disclosed in the reference. The Federal Circuit reversed, noting that to anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation, but disclosure of each element is not quite enough—anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.