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Aristocrat Technologies Australia Pty Ltd. v. International Game Technology

    Brief Fact Summary. Aristocrat (Plaintiff) patented a slot machine symbol combination invention and claimed IGT (Defendant) infringed upon its patent.  IGT argued the patent claims were invalid for indefiniteness because Plaintiff did not make known the structure for making the invention.

    Synopsis of Rule of Law. For a means-plus-function limitation in a computer-implemented invention, patent applicants are required, under 35 U.S.C. § 112 paragraph 6, to disclose the algorithm that transforms the general purpose computer to a special purpose computer programmed to perform the claimed function.

    Facts. Plaintiff received patent ‘102 for an electronic slot machine allowing a player to choose winning combinations of symbol positions.  Defendant manufactures and sells gaming machines, which Aristocrat (Plaintiff) claimed infringed upon patent ‘102.  Plaintiff chose to claim, pursuant to § 112 paragraph 6, which requires the disclosure of the structure used to put the invention into use.  The patent claims relate to the player’s ability to define various arrangements of symbols in order to increase chances of winning on the slot machine.  The claim defined the structure as a general purpose, programmable microprocessor.  The district court found inadequate specificity and noted Plaintiff did not specify a specific algorithm to perform the invented function.  Due to indefiniteness, the district court held all claims of patent ‘102 invalid.  Plaintiff appealed.

    Issue. For a means-plus-function limitation in a computer-implemented invention, are patent applicants required, under 35 U.S.C. § 112 paragraph 6, to disclose the algorithm that transforms the general purpose computer to a special purpose computer programmed to perform the claimed function?

    Held. (Bryson, J.)  Yes.  For a means-plus-function limitation in a computer-implemented invention, patent applicants are required, under 35 U.S.C. § 112 paragraph 6, to disclose the algorithm that transforms the general purpose computer to a special purpose computer programmed to perform the claimed function.  The issue in this case is the definiteness of the terms “game control means” or “control means” because Plaintiff chose to claim pursuant to § 112 paragraph 6, which requires disclosure of the structure regarding how the invention is put to use.  In this case, the term is a means-plus-function term that must be specific or the entire claim is invalid for indefiniteness.  Plaintiff argued it disclosed a general purpose, programmable microprocessor that used “appropriate programming” to implement the invention.  The structure disclosed must be more than a general purpose computer or microprocessor or the application is trying to patent pure function.  Instructions for the algorithm or software used on the general purpose computer or microprocessor essentially transform the general disclosure into a specific disclosure for a special purpose machine designed to carry out the particular function.  In this case, Plaintiff admits the only structure description is a general purpose computer that is programmed appropriately.  The type of programming required for the invention is not included in the specification.  An algorithm is not included in the specification that would allow one skilled in the art to reproduce the invention, although according to precedent it is not necessary to disclose known mathematical equations because they would be easily known by one skilled in the art.  Plaintiff’s specification only gives examples that would result from the “appropriate programming.”  Plaintiff argues that one skilled in the art could reproduce the invention, but that is confusing the enablement requirement of § 112 paragraph 1 with the structure disclosure requirement of § 112 paragraph 6.  The purpose of the structure disclosure is to limit the patent claim to the specified structure, not to prohibit everyone who uses a general purpose computer from performing the claimed functions.  Plaintiff is required to at least specify the method used to transform the general purpose computer to a “special purpose computer programmed to perform the disclosed algorithm.”  Without the necessary disclosure, Plaintiff’s claims are indefinite.  Affirmed.

    Discussion. The court required Plaintiff to include some identifying algorithm, not a detailed source code or a highly detailed disclosure of the algorithm.  Neither did the court require Plaintiff to disclose readily known algorithms or basic mathematical equations.  Plaintiff only needed to provide a middle-ground disclosure that identified the software element used to produce its invention.  This requirement can be avoided by patent applicants by not identifying a software element in the claim or by making a method claim instead of a means-plus-function claim.



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