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Joseph J. Farnan: Ordinary-Skill Evidence Assumes Importance in Means-Plus-Function Claim Construction

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Last week, district judge Joseph J. Farnan Jr. issued a claim construction decision notable for its means-plus-function analysis. The patents-in-suit, which disclose methods for automating filing tax returns, offered a number of claim terms for construction. But, according to the Court, the specification failed to disclose any structure to support the means-plus-function limitations:

“[T]he specification offers no detail regarding the underlying algorithms used by TurboTax to perform the recited means-plus-function steps. In these circumstances, additional evidence is necessary to confirm that one of skill in the art would understand the references to TurboTax as disclosing particular algorithms, and, more importantly, what those algorithms are. But no such evidence has been provided.”

Even if this evidence were presented, the Court continued, a corresponding structure is still absent:

“[T]hough the specification explains that certain steps can be implemented using progams ‘similar’ to TurboTax, the key reference in the specification to such software largely disparages it on the basis of requiring manual input. Where the patent’s reference to prior art software is, at best, equivocal, the Court is unethusiastic about relying on it for corresponding structure.”

Accordingly, to effectively combat a specification lacking detail on corresponding structure, practitioners should be prepared to offer ordinary-skill evidence during the Markman process.

Simplification LLC v. Block Financial Corp., C.A. No. 03-355-JJF (D. Del. Jan. 23, 2009) (Farnan, J.).

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