Ibormeith Ip, LLC v. Mercedes-Benz USA, LLC

TARANTO

Patrick F. Solon, Niro, Haller & Niro, of Chicago, IL, argued for plaintiff-appellant. With him on the brief was Oliver D. Yang. Scott W. Doyle, Shearman & Sterling, LLP, of WA, DC, argued for defendants-appellees. With him on the brief were Jonathan R. Defosse and Michel E. Souaya.
Before LOURIE, PROST, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge.

Ibormeith IP, LLC, the assignee of U.S. Patent No. 6,313,749, appeals a district court's grant of summary judgment of indefiniteness in favor of defendants Mercedes–Benz USA, LLC, and Daimler AG (collectively, “Mercedes”). We affirm.

U.S. Patent No. 6,313,749, entitled “Sleepiness Detection for Vehicle Driver or Machine Operator,” addresses 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. '749 patent, col. 1, lines 5–17; id. at col 2, lines 55–62. The monitor disclosed in the patent may take into account multiple factors associated with sleepiness, including natural body-clock (circadian) rhythm, the magnitude and number of corrective steering actions the driver is taking, the cabin temperature, the monotony of the road, and how long the driver has been driving. Id. at col. 2, lines 55–62; see id. at col. 12, line 25 through line 39. Some factors involve actions or conditions at the moment, like steering behavior and light conditions, which are measured by sensors in the vehicle. See id. at col. 3, lines 43–45; id. at col. 6, lines 14–17; id. at col. 6, lines 61–64. Others involve general or driver-specific background information, such as circadian rhythm or a driver's recent sleep patterns and alcohol consumption, which are not measured by sensors but must be input into the monitor by other means ( e.g., by the programmer or the driver). Id. at col. 3, lines 45–49. The factors are “individually weighted, according to contributory importance, and combined in a computational decision algorithm or model, to provide a warning indication of sleepiness.” Id. at col. 3, lines 39–42.

Claims 1 and 9 of the '749 patent are the two independent claims at issue. Both claims contain a “computational means” element that is undisputedly subject to the requirements of 35 U.S.C. § 112(f) for claims to means of performing specified functions. Claim 1 requires that the means take account of sleepiness-related time-of-day information to determine the likelihood of driver sleepiness and to produce an output that, according to a separate claim element, triggers a warning. ' 749 patent, col. 16, lines 21–30. Claim 1 reads:

A sleepiness monitor for a vehicle driver, or machine operator, comprising:

a sensor for sensing a driver or operator control input;

a memory for storing an operational model that includes a physiological reference model of driver or operator circadian rhythm pattern(s) and a vehicle or machine operating model or algorithm;

computational means for weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving, from the weighted model, driver or operator sleepiness condition and producing an output determined thereby; and

a warning indicator triggered by the computational means output, to provide a warning indicator of driver or operator sleepiness.
Id. at col. 16, lines 13–30.

Whereas claim 1 does not specify what driver conduct or other conditions may factor into the determination along with sleepiness-related time-of-day information, claim 9 focuses on the driver's steering. Claim 9 reads:

A sleepiness monitor for a driver and vehicle, comprising:

a sensor for sensing a steering movement, about a reference position;

a memory, for storing a circadian rhythm pattern or time-of-day physiological reference profile of pre-disposition to sleepiness; and

computational means for computing steering transitions and weighing that computation according to time of day, to provide a warning indication of driver sleepiness.
Id. at col. 16, lines 50–61.

Ibormeith sued Mercedes for infringing claims 1, 5, 8, and 9 of the '749 patent. Before and at a claim-construction hearing held on April 25, 2012, Mercedes argued that the means-plus-function “computational means” limitations in independent claims 1 and 9 were indefinite. (If so, the dependent claims 5 and 8 would also be invalid, because they incorporate the elements of independent claim 1.) The district court reserved its ruling on claim construction and indicated that a motion for summary judgment concerning indefiniteness should be pursued as a threshold issue. With the parties' agreement, the court directed that expert discovery take place on that issue.

That process occurred, and Mercedes moved for summary judgment of indefiniteness. On September 5, 2012, after receiving the parties' briefs, the district court ruled that the asserted claims were invalid because the “computational means” limitations were indefinite. Ibormeith IP, LLC v. Mercedes–Benz USA, LLC, 889 F.Supp.2d 677 (D.N.J.2012). The court granted summary judgment for Mercedes.

To comply with section 112(f), the specification of Ibormeith's patent has to disclose a structure for performing the functions claimed in the “computational means” limitation, the statute providing that the claim limitation covers that disclosed structure and its equivalents. If there is no such structure, the claim limitation is indefinite, i.e., fails to “particularly point[ ] out and distinctly claim[ ]” the invention, because there is insufficient definition of something that, by virtue of section 112(f), is incorporated into the claim. See, e.g., Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed.Cir.2013); Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1382–83 (Fed.Cir.2009). Ibormeith argued that the required structure is an algorithm, or any of several algorithms, it said could be found in three portions of the specification: (1) column 2, lines 55–62; (2) column 3, lines 5–30; and (3) Table 10. Ibormeith, 889 F.Supp.2d at 685. The district court held that those passages are inadequate to disclose the needed structure.

As to claim 1, the district court concluded that the cited passages did not disclose an algorithm for “weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving from the weighted model, driver or operator sleepiness condition and producing an output determined thereby.” Id. at 685–91. The court explained that column 2, lines 55–62, and column 3, lines 5–30, described the claimed functions but did “not disclose the algorithm by which the computational means performs those functions.” Id. at 685–86. The court also concluded that Table 10 did not disclose an algorithm for performing all of claim 1's “computational means” functions. Id. at 686–90. It reasoned that, although one skilled in the art might understand Table 10, along with Figures 3 and 17, to disclose a structure corresponding to the “weighting the operational model” function, Table 10 does not disclose an algorithm for deriving a score for “driver ... sleepiness condition” or an “output.” See id. at 687–90. Even putting aside Ibormeith's insistence that the various elements listed in Table 10 are merely options for inclusion in a calculation, the district court concluded: “Neither Table 10 nor any other clearly identified portion of the specification states the steps to obtain the listed elements' scores, or how to weight them according to their relative importance.” Id. at 687–88.

The district court also concluded that claim 9's “computational means” limitation was indefinite because the specification does not contain an algorithm that adequately provides structure for the claimed functions. Id. at 691–93. The court reasoned that, although Table 10 appears to disclose an algorithm for the “computing steering transitions” function of claim 9, the specification “fails to disclose the steps necessary to actually perform that suggested algorithm.” Id. at 692. The court rejected Ibormeith's argument that no algorithm is required for the “providing a warning indication” function because that function is intended to be carried out by a visual display panel (hardware) and not the computational means. Id. at 693. The court stated: the specification does “not explain how the monitor determines when the computation of steering transitions and time of day weighing leads to the issuance of a warning.” Id.

Ibormeith appeals. We have jurisdiction under 28 U.S.C. 1295(a)(1).

Ibormeith recognizes that the structure required for “computational means” in claims 1 and 9 must be an algorithm—a sequence of computational steps to follow—that must be found in the specification. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384 (Fed.Cir.2011); In re Freeman, 573 F.2d 1237, 1245 (C.C.P.A.1978). It is clear, as the district court ruled, that the only substantial question is whether such an algorithm is found in Table 10, along with Figures 3 and 17 and any other specification material that may clarify the meaning of Table 10. As Ibormeith agrees, whether there is adequate disclosure is a question of law that we decide de novo. Typhoon Touch, 659 F.3d at 1383.

Section 112(f) allows patentees to put structural details into the specification and build into the literal coverage of the claim a certain scope for equivalents in performing a defined function. See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1310 (Fed.Cir.1998). The price of using this form of claim, however, is that the claim be tied to a structure defined with sufficient particularity in the specification. E.g., id. at 1308;Function Media, 708 F.3d at 1317;Typhoon Touch, 659 F.3d at 1383–84. For a claim to be definite, a recited algorithm, or other type of structure for a section 112(f) claim limitation, need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan; but it must be sufficiently defined to render the bounds of the claim—declared by section 112(f) to cover the particular structure and its equivalents—understandable by the implementer. See AllVoice Computing PLC v. Nuance Comm'cns, Inc., 504 F.3d 1236, 1245–46 (Fed.Cir.2007). Here, we conclude, the disclosed algorithm does not adequately define the structure.

Table 10 of the patent, reproduced below, is entitled “Sleep Propensity Algorithm—Definition.”