Ibormeith IP, L.L.C. v. Mercedes-Benz USA, L.L.C., No. 10-5378; U.S. District Court (DNJ); opinion by Hochberg, U.S.D.J.; filed September 5, 2012. DDS No. 53-7-xxxx [24 pp.]

Plaintiff Ibormeith IP, L.L.C., filed this action claiming defendants Mercedes-Benz USA, L.L.C., and Daimler AG infringed its U.S. Patent No. 6,313,749, titled “Sleepiness Detection for Vehicle Driver or Machine Operator.” It asserts that Mercedes’ Attention Assist feature infringes claims 1, 5, 8 and 9 of the patent. Claims 5 and 8 depend from claim 1 and therefore contain each claim limitation in that claim. Claims 1 and 9 both contain a “computational means” limitation, which the parties agree is a means-plus-function limitation performed by a computer and governed by 35 U.S.C. § 112 ¶ 6.

The ’749 patent claims a sleepiness monitor for vehicle drivers or machine operators that functions by taking account of a driver’s circadian and sleep parameters and/or generic or universal human physiological factors applicable to a class or category of drivers and integrating that information with real-time behavioral sensing to provide an audiovisual indication of sleepiness.

Mercedes moves for summary judgment of indefiniteness, contending that the means-plus-function claim limitations in Claims 1 and 9 are indefinite, thereby rendering the claims invalid, and that certain claim terms in Claim 1 are indefinite.

Held: Because the patent fails to disclose an algorithm that addresses all aspects of the functional language in the Claim 1 “computational means” limitation, the court treats the specification as if no algorithm has been disclosed and that claim is indefinite. Similarly, the “computation means” limitation in Claim 9 is indefinite because the patent fails to disclose an algorithm that supports all of the claimed functions in the Claim 9 means-plus-function limitation.

The court says the 35 U.S.C. § 112 ¶ 2 definiteness requirement provides that a patent’s claims must particularly point out and distinctly claim the subject matter that the applicant regards as his invention. Section 112 ¶ 6 allows for means-plus-function claiming, which permits a patentee to claim a means for performing a certain function as long as the structure, material or act is disclosed in the specification. The structure corresponding to the function in a means-plus-function claim must be clearly linked to the function recited in the claim by the specification or prosecution history. If a means-plus-function claim limitation is implemented by a computer, the corresponding structure for a § 112 ¶ 6 claim is the algorithm disclosed in the specification.

Where the specification discloses no algorithm for the computer-implemented means to perform the claimed function, the means-plus-function claim limitation is indefinite under § 112 ¶ 2. When the specification discloses some algorithm, the question is whether the disclosed algorithm, from the viewpoint of a person of ordinary skill, is sufficient to define the structure and make the bounds of the claim understandable. Where, as here, a means-plus-function claim element claims a means for performing more than one function, any algorithm must address all aspects of the functional language. It if supports only some of the functions associated with a means-plus-function limitation, the specification is treated as if no algorithm has been disclosed.

The court therefore considers whether the specification of the ’749 patent adequately discloses an algorithm that provides structure in the form of an algorithm to perform each of the functions claimed in the Claims 1 and 9 “computational means” limitations.

The court says it is undisputed that the “computational means” limitation in Claim 1 requires a “computational means” for performing three functions: (1) weighting the operational model according to time of day in relation to the driver circadian rhythm pattern(s); (2) deriving, from the weighted model, driver sleepiness condition; and (3) producing an output determined thereby. Ibormeith contends that the specification fails to adequately disclose an algorithm for performing these functions in three different places.

The court examines the first two and concludes that they merely restate the claimed functions. This does not provide the required explanation of how the computer performs the claimed function.

The court then looks to the third, Table 10, titled “Sleep Propensity Algorithm — Definition.” It provides an equation, “S mod = S circ + S zerox + S rms + S light + S temp + S sleep + S road + S trip,” and indicates that the S mod and S circ values are greater than 0 and less than 1 and that each of the other “elementals” is greater than 0. The terms in Table 10 are defined in Table 11. However, the patent provides no explanation for Table 11.

After examining Table 10, the court concludes that, with respect to the first Claim 1 computational means function, Mercedes has not shown by clear and convincing evidence that someone skilled in the art would not understand Table 10, along with other figures, to disclose structure corresponding to this function.

As to the second function, the court concludes that Mercedes has met its burden to show that neither Table 10, the accompanying tables, nor the remainder of the specification, discloses the necessary steps to be taken by the “computational means” to derive driver sleepiness condition. Therefore, the Claim 1 computational means limitation is indefinite.

As to the third function, the court says that even if Table 10 provided a sufficient structure for the function of deriving driver sleepiness condition, it does not provide an algorithm that explains how that score is used to produce a warning to the driver. Because this is the central function of the monitor claimed by the patent, the algorithm corresponding to this function must be disclosed with significant detail. Since the patent fails to disclose that algorithm, the computational means limitation in Claim 1 is indefinite.

As to Claim 9, it is undisputed that its computational means performs three functions: (1) computing steering transitions; (2) weighing that computation according to time of day; and (3) providing a warning indication of driver sleepiness.

As to the first, the court says the person of ordinary skill in the art is again left by the patentee to work through Tables 10-14 on his own. For many of the same reasons discussed regarding the “deriving” function in Claim 1, the court says Mercedes has shown by clear and convincing evidence that the patent fails to disclose a sufficient algorithm for the “computing steering transitions” function of Claim 9. Therefore, as a separate and independent ground, the “computational means” limitation in Claim 9 is indefinite.

The court says that, for the same reasons discussed regarding the weighting function in Claim 1, Mercedes has not shown by clear and convincing evidence that someone skilled in the art would not understand the patent to disclose structure corresponding to Claim 9′s “weighing” function.

The court says that for the same reasons discussed with respect to the “producing an output” function in Claim 1, the patent fails to disclose an algorithm that supports the providing-a-warning function.

For the foregoing reasons, Mercedes’ motion for summary judgment of indefiniteness is granted.