IBORMEITH IP, LLC v. MERCEDES-BENZ USA, LLC

Patents containing “computational means” limitations require the disclosure of structures with specific steps for performing the claimed functions.

Opinion (Taranto): Ibormeith IP, LLC (“Ibormeith”) sued Mercedes-Benz USA, LLC, and Daimler AG (collectively, “Mercedes”) for infringing its ‘749 patent that used algorithms to monitor drowsiness and issue warnings to sleepy drivers. Mercedes was granted summary judgment on its argument that limitations on claims 1 and 9 of the patent were indefinite (see 9/12/12 summary here). Ibormeith appealed. Claims 1 and 9 both contained “computational means” elements that were subject to 35 U.S.C. §112(f), a law applied to claims that perform specified functions. To comply with 112(f), the patent needed to disclose specific steps of a definite structure for performing the functions claimed in the “computational means” limitation. Without the structure, and specific steps, a claim is indefinite. Reviewing de novo, the court relied heavily on Ibormeith’s insistence that its patent claims were broad enough to reach the alleged infringement of Mercedes. The court determined Ibormeith’s assertions of patent breadth showed that the ‘749 patent disclosed, at best, a raw formulation that a person of ordinary skill in the art could use to design their own method. Because claims 1 and 9 did not disclose a specific, single, and definite algorithm to explain how certain variables were combined and calculated the Court held that the ‘749 patent was indefinite. Accordingly, the court AFFIRMED the lower court's ruling.