Insufficient Postage

In the oral argument of, Inc. v. Endicia, Inc. et al., 2010-1328 (Fed. Cir. June 15, 2011), indefiniteness with respect to a means plus function claim was at issue. The court noted that the claim at issue, claim 23, depends from claim 21, and reads as follows:

The pertinent part of claim 21, from which claim 23 depends,4 recites:

A general multi-purpose processor-based system for authorizing a desired transaction to be con-ducted utilizing a particular provider, wherein in-formation with respect to said desired transaction as conducted by each of a plurality of providers is presented for selection of said particular provider, said system comprising: . . .


means for determining a value of said transac-tion associated with two or more of said plurality of providers utilizing ones [sic] of said transaction parameters;


means for presenting each of said determined values for comparison . . . .



4.  Claim 23 recites:

The system of claim 21, wherein said means for de-termining desired transaction parameters comprises:


means for accepting information associated with said transaction parameters from a general purpose computer program operating on said general multi-purpose processor-based system.

 ’568 patent, col.34 ll.49–54.

 The plaintiff-appellant asserted that the disclosure in the specification of various parameters necessary for calculating postage was sufficient to make the means plus function claim definite, especially given the simple nature of the calculation.  The defendant-appellee countered that no structure or algorithm for computing postage had been disclosed and that the means plus function claim was necessarily indefinite.

A means plus function claim only covers structure and material disclosed in the specification and its equivalents, so as to avoid pure functional claiming.  But, there is a spectrum to the law of indefiniteness between cases like Wellman, Inc. v. Eastman Chemical Co., 2010-1249 (Fed. Cir. April 29, 2011)* which notes that one need not disclose details in the specification that are well known to one of ordinary skill in the art  in order to satisfy definiteness requirement under 35 USC §112, ¶2 and cases like In re Katz Litigation, 2009-1450 (Fed. Cir. March 2, 2011) which notes that a means plus function clause is indefinite if there is no or insufficient structure in the specification corresponding to the claimed means.  Judge Bryson explored this spectrum with the parties during the oral argument of questioning whether there was a way to articulate a standard for indefiniteness when the claimed means plus function element refers to an extremely simple function, such as adding two numbers.  You can listen to his exchange with the plaintiff-appellant and defendant-appellee [here] and [here], respectively.

The panel would ultimately decide that the function being performed was not simple and that the means plus function claim was indefinite.  Judge Dyk wrote:

Here, the calculation of shipping value appears to involve a complex interaction of zone variables, weight variables, and class variables. There is no disclosure of the actual algorithms necessary to calculate the transaction value, nor is there any disclosure that these algorithms involve only simple arithmetic. The failure to provide such an algorithm in the specification renders claim 23 of the ’568 patent invalid as indefinite.

You can listen to the entire oral argument here:  [Listen].

You can read the court’s opinion here:  [Read].


*The Wellman v. Eastman Chemical case mentioned above states the following:

In holding the claims indefinite, the district court focused on the lack of specific moisture conditions for DSC testing, reasoning that the absence of intrinsic guidance would prevent a person of ordinary skill from understanding the bounds of the claims. Wellman, 689 F. Supp. 2d at 719-20. However, an inventor need not explain every detail because a patent is read by those of skill in the art. Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1156 (Fed. Cir. 2004) (citing In re Howarth, 654 F.2d 103, 105 (CCPA 1981)). Well known industry standards need not be repeated in a patent. See id. In this case, the record shows that a person of ordinary skill in the art in this field would follow standard industry guidance for conditioning plastics for DSC. Specifically, the record shows that (1) the 1997 International Standard for Differential Scanning Calorimetry of Plastics (“ISO 11357-1) (the “1997 ISO”) provides a person of skill in the art with an objective standard for moisture conditioning; (2) a person of skill in the art would have been aware of the 1997 ISO prior to the filing of its patent applications; and (3) a person of skill in the art would have interpreted the Wellman patents in view of the 1997 ISO.

Interestingly, one of the cases that the Wellman panel cites for support, Koito v. Turnkey, is an enablement case — not an indefiniteness case.  The In re Howarth case states the following:

The starting point under § 112 is that a duty is imposed which must be met by an applicant. In exchange for the patent, he must enable others to practice his invention. An inventor need not, however, explain every detail since he is speaking to those skilled in the art. What is conventional knowledge will be read into the disclosure. Accordingly, an applicant’s duty to tell all that is necessary to make or use varies greatly depending upon the art to which the invention pertains.

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