Categories: 112 - Means Plus
      Date: Oct 23, 2013
     Title: Ibormeith v. Mercedes-Benz: Attempt to Encompass Infringing Product Removes Necessary Structure to Support Means-Plus Language
Category: 112 - Means Plus 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleIbormeith IP, LLC v. Mercedes-Benz USA, LLC, No. 2013-1007 (Fed. Cir. Oct. 22, 2013).
Issue"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."
Ibormeith IP, LLC at *5.
Holding"[Based on the binding admission of the patentee's own expert witness that the addition algorithm of the specification is only a general template encompassing many weighting operations] […] the two figures [of the specification] provide raw circadian information that a person of ordinary skill in the art could use to design his or her own method of weighting. 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."
Id. at 11-23 (text added).

Procedural History"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 Mer- cedes-Benz USA, LLC, and Daimler AG (collectively, “Mercedes”)."
Ibormeith IP, LLC at *2.
Legal Reasoning (Lourie, Prost, Taranto)
Claim language at issue: "Computational Means"
Claim 1 feature"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 […]"
Ibormeith IP, LLC at *3-4.
Claim 9 feature"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 *4.
Legal Standard: Means-Plus"Section 112(f) allows patentees to put structural de- tails 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; Functional 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)."
Ibormeith IP, LLC at *7.
Specification Support for "computational means"
Table 10"Beneath the heading, "Table 10," is what looks like a mathematical equation: "S mod = S circa + S zeros + S rms + S light + S temp + S sleep + S road + S trip." Id. The table also provides that the values for the S mod (drive sleepiness) and S circa (circadian rhythm) "elementals" (or factors) are positive but less than 1 and that the other discloses factors are all positive. Id. These factors are defined in Table 11, which is entitled "Algorithm Elementals - S." […]"
Id. at *8.
Figures 3 and 17"Figure 3 is a graph depicting the likelihood of falling asleep at different times during the day. […] Figure 17 […] appears to reflect the same reference models as Figure 3. It too depicts how sleepiness varies depending on time of day, but it includes three warning lines meant to represent warning threshold levels."
Id. at *9.
Patentee/Expert's Desire for Broad Interpretation of Specification Algorithm Proves Fatal
Expert Witness: Addition Algorithm Amounts to Only a "Template" "Ibormeith’s expert, Dr. Jochem, opined that the algorithm is not based on simple adding of already weighted inputs. In his expert report, Dr. Jochem described the disclosed computational means as an algorithm “template.” J.A. 617-18 ¶ 54 (“I believe that the patent authors meant for Table 10 to be used as a template for constructing a specific formula(s) or equation(s) to compute sleepiness.”); […] J.A. 660 (Dr. Jochem testifying that weighting could be performed by multiplication or a function that has some linear or nonlinear terms); […]."
Ibormeith IP, LLC at *9-10.
Attempt to Encompass Infringing Product Binding"[…] Ibormeith’s argument […] needs to be based on a reading of Table 10 that is broad enough to reach the accused products. With consequences of such importance, Ibormeith’s position as to Table 10’s breadth is fairly treated as a binding admission."
Id. at *10.
Broad Interpretation of Algorithm Removes Necessary "Structure" "Such a reading of Table 10 leaves the disclosure without an algorithm whose terms are defined and understandable. If, as Dr. Jochem [Ibormeith's expert] testified, the algorithm in the ’749 patent is not disclosing addition, then the S circ factor in Table 10 merely indicates that weighting based on circadian patterns occurs. Neither Table 10 nor the associated tables disclose how to perform the weighting of the S circ or any other factor. Table 10 merely lists inputs without specifying any single formula or function or algorithm defining the contribution of any of the inputs to a computation. As recognized by Mercedes’s expert Dr. Knipling, a person of ordinary skill in the art “would need to devise his or her own method for determining driver drowsiness based on the factors generally disclosed in Tables 10, 11 and 12.” J.A. 805 ¶ 19."
Id. at *11.
For these reasons, the judgment of the district court is affirmed.
Ibormeith IP, LLC at *13.
Image Attribution Statement: Kevin Saff at en.wikipedia, "USS Inaugural demolished," available as public domain work of the U.S. federal government, (last visited Oct. 22, 2013).