Ibormeith IP, LLC v. Mercedes-Benz USA
Ibormeith IP, LLC, a company owning the patent rights to technologies in the automotive industry, was assigned a patent on some really neat safety features for automobiles- a monitoring device to alert drivers that may be falling asleep. Due to an inadequate disclosure in the patent’s specification, however, Ibormeith recently lost its claim for patent infringement against the well known automobile giant Mercedes-Benz.
Ibormeith sought damages from Mercedes-Benz for patent infringement of U.S. Patent 6,313,749 (the ‘749 Patent). Mercedes countered with an argument that the claims asserted against it were in fact indefinite. More specifically, Mercedes argued that the means-plus-function “computational means” limitations in two independent claims were indefinite. The district court agreed and entered summary judgment in favor of Mercedes. The Federal Circuit affirmed, noting that the specification does not contain an algorithm that adequately provides structure for the claimed functions.
The ‘749 Patent, entitled “Sleepiness Detection for Vehicle Driver or Machine Operator,” involves the monitoring of a vehicle driver’s sleepiness and providing a warning to the driver, when certain factors that indicate the driver’s falling asleep, are detected. The device involved an algorithm, which takes into account several factors to alert a driver that may be falling asleep. Particularly, the device accounts for the driver’s circadian rhythm, the magnitude and number of corrective steering actions the driver takes, cabin temperature, monotony of the road, and how long the driver has been driving. Other factors involve actions like steering and light conditions, which are measured by sensors in the vehicle, and other factors must be provided to the device (by the programmer/user/driver), such as driver-specific background information, including sleep patterns and alcohol consumption. The factors are weighted, according to contributory importance, and combined in a computational decision algorithm or model, to provide a warning indication of sleepiness.
The claims at issue contain a “computational means” element that is subject to 35 U.S.C. 112(f). The court explained the law and application as follows (from its opinion):
“Section 112(f) allows patentees to put structural details 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).”
Because the court concluded that the disclosed algorithm does not adequately define the structure, it affirmed the lower courts decision. Hence, by providing an inadequate specification, which according to the court does not contain an algorithm that adequately provides structure for the claimed functions, the asserted claims of the patent were deemed invalid.
Saul Acherman
Attorney at
JAFARI LAW GROUP®, INC.