Microsoft Corp. v. Motorola, Inc.

The disclosure of an algorithm for a similar, but different, structure from which a person skilled in the art could derive the undisclosed algorithm is not adequate disclosure, and the limitation containing the undisclosed algorithm is therefore invalid for indefiniteness.

Opinion (Robart): Motorola sued Microsoft alleging its Windows 7 and Internet Explorer 9 products infringed 32 claims spread over three patents. The patents disclose systems and methods for encoding and decoding digital video data. Microsoft moved for partial summary judgment on the fact that the means for decoding and the means for using elements of the patents were invalid for indefiniteness. The 13 claims at issue consist of three independent apparatus claims. The remaining claims were dependent on the independent claims, of which the parties agreed were means-plus-function claim limitations whose function was decoding. Each of the patents disclosed an algorithm for encoding video data, however, no algorithm for decoding was expressly disclosed. Motorola argued that a skilled artisan would be able to use the encoding algorithms to devise the decoding algorithms, and that therefore the decoding claims were adequate. The court disagreed, holding that the specification must disclose an algorithm that can be the basis of the artisan's understanding. Because no decoding algorithm was disclosed, the limitations were held invalid for indefiniteness.