1

No. 16-346C

(Originally filed: February 3, 2023)

(Reissued: February 21, 2023)1

* * * * * * * * * * * * * * * * * * * * * * * 

GEOSPATIAL TECHNOLOGY 

ASSOCIATES, LLC,

Plaintiff,

v.

THE UNITED STATES,

Defendant.

* * * * * * * * * * * * * * * * * * * * * * * 

Richard T. Matthews, Raleigh, NC, for plaintiff.

Jenna Munnelly, Trial Attorney, United States Department of Justice, 

Washington, DC, with whom were Scott Stewart, Deputy Assistant Attorney 

General, Gary L. Hausken, Director, for defendant.2 

OPINION

BRUGGINK, Judge.

This is a patent and copyright case brought against the government for 

infringement of plaintiff’s Patent No. 8,897,489 (the “‘489 patent”) and the 

associated software protected by copyright. Plaintiff alleges that defendant 

1 This opinion was originally issued under seal to afford the parties an 

opportunity to propose redactions of protected information. They agreed that 

none were necessary. The opinion thus appears in full. 

2

 Mr. Stewart was listed on the briefs at the time the motions were initially 

filed and subsequently briefed. Brian M. Boyton is now the Principal Deputy 

Assistant Attorney General at the Department of Justice on the government’s 

briefs filed in this case. 

Patent infringement; 

Obviousness;

Motivation to combine;

Indefiniteness; Improper 

combination of method 

and apparatus claims; 

Means-plus-function 

structure
2

improperly possessed and used the ‘489 invention in violation of its patent. 

Defendant has responded, inter alia, by arguing that it did not infringe 

because the ‘489 patent is invalid. Pending are the parties’ renewed motions 

for summary judgment on patent validity. As explained below, plaintiff’s 

motion is granted in part, and defendant’s is denied.

BACKGROUND

The ‘489 patent teaches the creation and use of a solid-object

detection and identification apparatus. The technology “eliminates the need 

for an analyst to visually inspect all data and instead enables the analyst to 

quickly focus on an accurate and ranked list of target detections” within each 

image. ‘489 patent at 4. The invention functions by using a computer to

accept a series of images from its user, and then uses a statistical detection 

algorithm to “filter each pixel in each of one or more images” to generate “a 

statistical detection score” for each pixel in the image. Id. The apparatus then

examines the regions surrounding high-scoring pixels and uses an algorithm 

to unmix the pixels, collate the scores, and determine an “object based score 

for each [image’s] identified regions.” Id. at 4 (language added for clarity). 

Once regions with high target scores are identified, the ‘489 invention crossreferences the scores with geographical data, further increasing the accuracy 

of the target detection process. The apparatus then feeds a report on the 

geographical location of the identified objects to the user who verifies if 

identified pixels and regions hold objects of interest to the analysist. Id. 

Five steps fully encompass this process (as described in the patent’s

second figure): 1) obtaining images; 2) applying a statistical filter to generate 

a per pixel detection score; 3) “apply[ing] spatial process to per pixel . . . 

scores to identify regions” and to determine the score “in each detection 

plane;” 4) determining “corresponding geographical information for each 

identified region;” 5) and providing the selected regions and object scores 

“with corresponding geographical information.” Id. at 3. Steps two through 

four can be repeated iteratively on each image to provide greater accuracy in 

the final report issued to the user analyst.

The ‘489 invention was developed between 2008 and 2011 by Dr.

William Basener and was filed in a patent on January 28, 2011. Portions of 

the invention’s software were subsequently copyrighted in July of 2017 

under Registration No. TX 8-420-604. The invention’s intellectual property 

rights were originally assigned by Dr. Basener to the Rochester Institute of 

Technology (“RIT”), but were later reassigned on November 12, 2015 to 

Geospatial Technology Associates, LLC. (“GTA”, the plaintiff here.
3

Subsequently, the government licensed the use of the ‘489 invention

for a short image processing contract. Under this agreement, plaintiff used 

the ‘489 invention to process and analyze images furnished by the 

government. Because the analysis process used an iterative procedure that 

used previous image results to accurately identify future images, at least one 

copy of plaintiff’s invention remained on government computers after the 

end of the image processing contract. Plaintiff alleges that the government’s

possession of this ‘498 invention copy and use of other detection programs

beyond the termination of the license, have infringed the ‘489 patent. In total, 

the nine programs causing alleged infringement are: Full Spectrum Tool Kit 

(“FSTK”), FTSK with Probabilistic Identification of Solid Materials 

(“PRISM”), GeoReplay, GeoReplay with Prism, GeoReplay Full Spectrum 

Exploitation (“GeoReplay-FX”), Lobo, HyperSEAL, GEOMATE, and 

Object-Based Identification, Sorting, and Ranking (OBISR) algorithms. As 

a result, plaintiff filed suit against the government on March 16, 2016, to seek

damages for the unlicensed use of plaintiff’s intellectual property.

On July 24, 2020, defendant filed a brief presenting three bases on 

which it believed that the ‘489 patent was invalid: 35 U.S.C. §102 lack of 

novelty, 35 U.S.C. §103 obviousness, and 35 U.S.C. §112 indefiniteness.3

Plaintiff responded to this brief with a motion for summary judgment 

asserting the ‘489 patent’s validity; defendant replied with an opposing 

cross-motion regarding invalidity. Both motions were fully briefed, and on 

April 8, 2021, Judge Griggsby, previously assigned to this case, ruled against 

plaintiff and held that all claims in the ‘489 patent were non-novel and invalid 

under 35 U.S.C. §102 because they were fully anticipated by the Civil Air 

Patrol’s Hyperspectral Sensor System (“Archer”). Geospatial Tech. Assocs.

v. United States, No. 16-346C, 2021 U.S. Claims LEXIS 1085 (Fed. Cl. Apr.

8, 2021). Because this decision invalidated the entire patent, Judge Griggsby 

did not decide whether the ‘489 patent was obvious or indefinite. Plaintiff 

then sought reconsideration of the holding of obviousness.

The case was thereafter transferred to the undersigned. On 

reconsideration, plaintiff argued (amongst other unsuccessful arguments)

that the court previously had erred because, “for a court to find a feature of a 

patent obvious or anticipated by some prior art, without that feature being 

explicitly taught, that feature must be ‘necessarily present in the thing 

recognized by persons of ordinary skill.’” Geospatial Tech. Assocs., LLC v.

3 The court invited defendant to present its views on the patent’s validity in 

a brief. See ECF No. 196 (Order of July 14, 2020). Dispositive motions 

were to be scheduled later, but plaintiff responded to the government’s brief 

with a motion, and defendant followed course. 
4

United States, 158 Fed. Cl. 113, 119 (2021) (quoting In re Robertson. 169

F.3d 743, 745 (Fed. Cir. 1999)). Plaintiff used this precedent to argue that

because the “unmixing” capabilities of the ‘489 patent were not found in the

ARCHER prior art, the ‘489 patent could not have been fully anticipated by

ARCHER. We agreed and, on November 29, 2021, held that “it is 

insufficient that the prior art might be capable of performing a function of a 

patented invention [unmixing] if only it were modified, tweaked, or . . . used 

in a machine. For a feature to be inherent in the prior art, however, that 

feature must be necessarily present in the steps, functions, or elements of the 

prior art.” Id. at 6, language added for clarity.

Because the ARCHER system did not have “unmixing” as a step, 

function, or element, the undersigned granted the motion in part and declared

that the ARCHER system did not anticipate claims 5, 14, 23, 29, 31, and 33 

of the ‘489 patent. Id. Although this ruling had the effect of reviving the ‘489 

patent, it did not adjudicate the obviousness and indefiniteness arguments for 

patent invalidity. Because those issues are unresolved and have been fully 

briefed, we will consider the validity issues.

Discussion

In its brief on patent invalidity, defendant argued that the ‘489 patent 

was obvious under §103 because of existing prior art that taught target 

detection and identification from images. Defendant also argued that the ‘489 

patent was indefinite under §112 because the patent confused method and 

apparatus claims and failed to disclose the “specific structure” of the patent’s 

algorithm. ECF No. 201 at 13, 23-25. Plaintiff opposed these arguments and 

sought summary judgment to declare that the ‘489 patent was both nonobvious and definite.

I. Obviousness

The aim of the U.S. patent system is to encourage innovation and 

promote the spread of new technology throughout the public by creating a 

disclosure that will “give the public the benefit of an invention after the 

patent shall expire.” Beidler v. United States 253 U.S. 447, 453 (1920). In

line with this goal, it is Congress’s desire only to allow patents for true 

innovations, and not for the use of previously known elements in an obvious 

combination. See generally KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 

416 (2007).

To achieve this purpose, Congress included §103 as a qualification for 

earning a valid U.S. Patent: “A patent for a claimed invention may not be 
5

obtained . . . if the differences between the claimed invention and the prior 

art are . . . obvious . . . to a person having ordinary skill in the art.” This 

means that, when previous inventions (prior art) can be combined in obvious 

ways to result fully in the now-claimed invention, any patents granted for 

that invention are invalid and not able to serve as the basis for a patent 

infringement lawsuit. In this case, defendant argues that the ‘489 patent runs 

afoul of §103 because the claimed invention is:

(1) a combination of prior art elements according to known methods 

to yield predictable results, (2) a simple substitution of one known 

element for another to yield predictable results, (3) an application of 

known techniques to known devices ready for improvement to yield 

predictable results, (4) and/or obvious to try.

ECF No. 201 at 14-15.

In support of these assertions, defendant commissioned Alan Stocker, 

an engineering consultant, as an expert to review the ‘489 patent and write a 

report (the “Stocker Report”) evaluating the ‘489 patent’s validity. In it, Mr. 

Stocker opines that two primary pieces of prior art existed before the ‘489 

patent’s filing date that together disclose all of the claims of the ‘489 patent,

rendering it obvious under §103. The first of the prior art references 

identified by Mr. Stocker is a type of “automated algorithm” used “for 

detecting gas plumes and identifying their chemical constitutes via a detailed 

analysis of aggregated pixel spectra.” ECF No. 201-1, at 12-13. The second 

piece of prior art is an image identification algorithm named “GeoID” 

developed by the Air Force national Air and Space Intelligence Center to 

“process spectral imagery from . . . sensors as well as several other 

instruments.” Id. Taking these two together, Mr. Stocker avers that all of the 

features and limitations of the ‘489 patent are found. Assuming that to be 

true, which plaintiff disputes, the only remaining question is whether a 

person of ordinary skill in the art (POSITA) would have been motived to 

combine the two algorithms at the time of the invention at issue. 

Defendant points to a particular line in Mr. Stocker’s report as 

indicative of just this motivation in the field at the time: “there was an 

‘emphasis’ in the H.S.I. [(Hyper-spectral imaging)] community towards 

utilizing known methods and algorithms of target identification used for gas 

problems to address solid-matter problems.” ECF NO. 201 at 15. Thus, any 

POSITA would have thought it simple and obvious to “combine target 

detection [(gas plume detection)] and target identification [(the GeoID 

algorithm)] to reduce false alarm rate[s]” and thereby develop the ‘489 
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invention. Id. If so, the ‘489 patent’s invention is obvious under § 103 and 

ineligible for intellectual property protection.

Plaintiff disagrees on all counts, emphasizing that an invention which 

combines known elements is novel if there is no known motivation to 

combine them at the time of the invention. Plaintiff points out that “the fact

[that] a POSITA might or even would be able to combine certain references 

does not mean they would have had a reason or motivation to do so.” ECF 

No. 204 at 19 (citing TQ Delta, LLC v. Cisco Sys., 942 F.3d 1352 (Fed. Cir.

2019); InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327 (Fed. Cir.

2014)) (emphasis omitted). Plaintiff finds the line in Mr. Stocker’s report 

regarding the use of gas plume identification algorithms for solid matter 

problems lacking the crucial details of how that would have motivated a 

skilled artisan to combine the two pieces of cited prior art in a manner that 

teaches the claim limitations of the ‘489 patent. Plaintiff also doubts the 

veracity of Mr. Stocker’s statement, presenting 2011 emails from Mr. 

Stocker in which he expressed doubt regarding combining these two types of 

algorithms to meet the need for solid matter identification. ECF No. 204-6. 

Plaintiff further cites to its own validity expert, Dr. Jones, who opined that 

the prior art teaches away from the combination of methods found in the ‘489 

patent. See ECF No. 202-2 (Jones Report) at ¶¶ 170-71, 167-68, 423-26. At 

best, per plaintiff, Mr. Stocker’s statements raise a disputed question of fact.

Plaintiff also raises the more basic point that defendant has not 

presented any evidence, and very little argument, as to how the prior art 

compares to the patent claims, i.e., a claim-by-claim analysis of whether the 

pre-existing algorithms disclosed the limitations contained in the asserted 

patent. It finds any such analysis lacking from Mr. Stocker and asserts that 

the claim chart appended to the government’s motion is grossly inadequate, 

or, as counsel described it, “a ‘choose-your-own adventure’ endeavor.” ECF 

No. 204 at 22. 

Defendant replies that it has presented undisputed evidence on both 

points. On the question of motivation, it admits that the precise term was not

used by Mr. Stocker but argues that his statements at deposition and in his 

report are sufficient to show the motivation present at the time of the 

invention. The government quotes the following from Mr. Stocker’s 

deposition testimony: “[the] hyperspectral community emphasis shifted 

towards solid-material targets with reflective-band spectral signatures, 

analytical methods and algorithms previously optimized for the gas problem 

in the thermal infrared region were tailored and extended to apply to the 

solids realm using reflective-band imagery.” ECF No. 201, Ex. A ¶¶ 37-38. 

This “shift” or “emphasis,” according to the government, demonstrates that,
7

as of the patent’s priority date, other researchers in the field were working on 

developing methods to use gas signatures for solid object identification. If 

those in the field were already trying to use known identification methods for 

solid objects, then the motivation was already present and further motive

need not be proved, argues defendant. That may ultimately be proven, but 

the facts are in dispute. 

A showing of motivation to combine is critical to the obviousness

analysis because “inventions in most, if not all, instances rely on building 

blocks long since uncovered, and claimed discoveries almost of necessity 

will be combination of what, in some sense, is already known.” KSR Int'l 

Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Patents are not often issued 

in truly novel areas of endeavor. Science and industry are largely advancing 

incrementally, building upon what came before. Thus, courts must consider 

carefully whether a motivation to combine previously known in elements in 

the way claimed by the patent in suite was present in the field of art before 

declaring a patent invalid. Because “obviousness determinations cannot rely 

on hindsight,” courts must carefully consider motivation to combine 

arguments to prevent ex post reasoning. Belcher Pharm., LLC v. Hospira,

Inc., 450 F. Supp. 3d 512, 538 (D. Del. 2020) (citing KSR, 550 U.S. at 421).

The government’s Stocker Report states that, at the time of the ‘489 

patent’s filing, other non-party researchers were moving towards using

existing gas analysis programs for solid object identification. Plaintiff 

presents evidence that casts at least some doubt on this asserted inertia in the 

form of Mr. Stocker’s own prior statements and Dr. Jones’ opinion that prior 

art taught away from combining in the manner that the invention did, which 

casts doubt on a finding of the necessary motivation to combine.

“Obviousness is a question of law based on underlying findings of fact,

which include the motivation to combine multiple prior art references and

any objective indicia of non-obviousness.” S. Ala. Med. Sci. Found. v.

Gnosis S.p.A., 808 F.3d 823, 826 (Fed. Cir. 2015). On the present record,

motivation is disputed, and very little evidence or argument regarding the

secondary indicia has been presented. For those reasons alone, summary

judgment is inappropriate. We note, further, however, that, as plaintiff points

out, no claim-by-claim analysis was presented beyond the government’s

chart. No citations to or argument from it were made in defendant’s briefing,

however. The issue of whether the cited prior art meets the limitations of the

‘489 claims is also preserved for trial as the record at this point is immature

on the issue. 
8

II. Indefiniteness 

Defendant also challenges the patent’s validity on definiteness 

grounds. Because the ultimate purpose of a patent is to encourage both 

innovation and disclosure of new technology to the public—a delicate 

balance to be sure—the patent must adequately give notice of what it claims. 

See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909-10 (2014) 

(clarifying that the indefiniteness requirement is aimed at ensuring adequate 

notice to the public of what is claimed and what is not); see generally Pfaff 

v. Wells Elecs., Inc., 525 U.S. 55, 63-64 (1998) (discussing the “carefully 

crafted bargain” of the patent system that encourages innovations and 

disclosure of technology). This notice requirement is found in 35 U.S.C. 

§112, which states that a patent “shall contain a written description of the 

invention, and of the manner and process of making and using [the 

invention], in such full, clear, concise, and exact terms as to enable a 

[POSITA] to make and use the [invention].” Should an invention fail to meet 

this standard of disclosure, the patent is indefinite and invalid. 

Defendant presents two reasons why it believes the ‘489 patent does 

not adequately disclose the claimed invention to the public. First, the 

government argues that the ‘489 patent claims disclose both a method and an 

apparatus. Claims “reciting both an apparatus and a method of using that 

apparatus render a patent claim indefinite.” I.P.X.L. Holdings, L.L.C. v. 

Amazon Inc, 430 F.3d 1377, 1384 (Fed. Cir. 2005). The second argument is 

that the ‘489 patent is indefinite because the specifications fails to adequately 

disclose the algorithm claimed by the ‘489 invention. “[I]f there is no 

structure in the specification corresponding [to the invention’s details] . . . 

the claim will be found as indefinite.”4 Biomedino, L.L.C. v. Waters 

Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007), (clarification 

added). Defendant argues that “when general purpose computers are 

disclosed, the specification must disclose a specific algorithm to transform 

the general-purpose microprocessor to a special purpose computer 

programed to perform the disclosed algorithm.” ECF No. 201 at 22.

A. Method and Apparatus

4 Defendant also argues that claims 5 and 29 are indefinite due to a failure to 

“provide reasonable certainty of the scope of the invention.” ECF No. 201 

at 21-22. However, this question is encompassed by the broader means-plusfunction argument addressed herein.
9

Claims 5 and 29 of the ‘489 patent describe methods of using a 

computer containing the ‘489 algorithm for “identification, sorting, and 

ranking detections of one or more targets.” ‘489 Patent at 7, 9. Conversely, 

claims 14, 23, 31, and 33 describe the actual physical set-up of a computer 

programed to perform the ‘489 algorithm, including “a non-transitory 

computer medium having stored thereon instructions for identification, 

sorting and ranking detection of one or more targets . . . .” Id. at 8-10.

The government contends these claims are indefinite by noting that 

the ‘489 patent claims mention an apparatus (alternatively referred to as a 

“medium”), but then detail a series of steps (“unmixing the target detection 

processing apparatus,” or “comparing [the image] with the target detection 

processing apparatus”) that must be performed for the invention to function. 

See claims 5, 14, 23, 29, 31, 33 of U.S. Patent No. 8,897,489 B2 (issued Nov. 

25, 2014). The government argues the inclusion of these steps comprises a 

process patent claim which, when combined with the apparatus in the claim’s 

preamble, makes the patent so indefinite that a skilled artisan could not 

reproduce the invention. 

Plaintiff makes two responses to this method-apparatus combination 

allegation. First, it argues that two of the claims (claim 5 and claim 29) are

method claims that avoid the issue of combination indefiniteness because 

they claim only methods and not apparatuses. Plaintiff argues that these two 

claims are not methods that claim an apparatus, but rather methods that 

describe the functioning of the apparatus as a limitation of the method itself. 

Plaintiff argues that this distinction prevents claims 5 and 29 from being 

indefinite. Id. We find this line of reasoning persuasive and note that it is 

consistent with existing precedent that “a method claim may include an 

apparatus element that invokes 35 U.S.C. § 112.” Spherix Inc. v. Vtech

Telcoms. Ltd, 2015 U.S. Dist. LEXIS 171949 (N.D. Tex. Mar. 19,

2015), citing the Federal Circuit Court of Appeal’s reasoning in both On 

Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1336, 1340-41

(Fed. Cir. 2006) and J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 

1364 & n. 1, 1367 (Fed. Cir. 2001).

Both claims 5 and 29 describe the process of the ‘489 invention’s 

operation, and by their very nature must mention aspects of the apparatus’s 

components. This does not mean that claims 5 and 29 are claiming the 

apparatus components, but rather that 5 and 29 are using the apparatus as 

limitation for the method being described. We do not find that this use of 

apparatus as a limitation makes claims 5 and 29 vague to the point that a 

POSITA would be unable to reproduce the method due to confusion as to

whether those claims are for a method or for an apparatus.
10

Plaintiff’s second response to the government’s method and apparatus 

combination argument is that the remaining apparatus claims (14, 23, 31, and 

33) do not include a method claim that renders them indefinite. Instead, 

plaintiff argues that the alleged method of these claims is actually a limitation 

of the apparatus because the apparatus, not a user, performs the action.

We again agree with plaintiff. The Federal Circuit’s decision in

Mastermine Software instructs that an apparatus claim can have functional 

language so long as “the functional language does not appear in isolation, but 

rather, is specifically tied to the physical structure” of the apparatus

Mastermine Software Inc. v. Microsoft Corp. 874 F3.d 1307, 1316 (Fed. Cir. 

2017). So long as the function is performed by the structure of the apparatus 

and is not a series of steps performed by the user, the functional language 

merely defines the limitations and capacity of what the apparatus can do and 

is not indefinite because it combines an apparatus and a method. Id. Such is 

the case here.

There is no aspect of any part of claims 14, 23, 31, or 33 that requires 

the apparatus user to perform any action or step. Claims 14 and 31 detail a 

“computer readable medium” which “store[s] thereon instructions for 

identification, sorting and ranking detections of one or more targets.” This 

language specifies a computer containing instructions for identification, 

sorting, and ranking, not a step wherein the computer’s user identifies, sorts, 

and ranks targets. Thus, claims 14 and 31 meet the Mastermine standard.

Similarly, claims 23 and 33 specify an “apparatus comprising . . . processors 

which are configured to execute programed instructions stored in the 

memory.” The programmed instructions include “determining a target 

detection score,” “identifying a region,” and unmixing the pixel with the 

highest determined . . . score.” None of these steps are performed by the 

apparatus’s user, and all are stipulated as limitations of what the apparatus 

can perform. Therefore, claims 23 and 33 also satisfy the Mastermine 

definiteness rule.

All functions performed in these four claims are performed by the 

apparatus, therefore the description of the apparatus’s function is a limitation 

of the apparatus being claimed by the ‘489 patent. See also UltimatePointer,

L.L.C. v. Nintendo Co., where the Federal Circuit held that “if an apparatus 

claim is ‘clearly limited to a[n apparatus] possessing the recited structure and 

capable of performing the recited functions,’ then the claim is not invalid as 

indefinite.” 816 F.3d 816, 825 (Fed. Cir. 2016) (citing Microprocessor

Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed.

Cir. 2008)).
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Accordingly, we do not find that the ‘489 patent is indefinite due to 

an invalid combination of method and apparatus claims. The method claims

and the apparatus claims of the ‘489 patent are sufficiently distinct as to not 

be confused for each other by a person of ordinary skill. 

This decision on the '489 claims, however, only pertains to whether 

the ‘489 patent is indefinite for combination-induced indefiniteness. As 

discussed below, there are other questions raised by defendant that are 

unresolvable at this point.

B. Necessary Structure

The government also argues that “the ‘489 patent relies upon a meansplus-function terminology that is crippled by the fact there is no disclosure 

of a corresponding algorithm for the ‘determining,’ ‘identifying,’ and 

‘processing’ function . . . . Rather, the specification vaguely references 

hardware and software, but provides no identification of a specific 

software/algorithm.” ECF No. 204 at 24, (emphasis added). Instead of 

teaching the algorithm, the patent merely describes what the ‘489 formula 

can or should accomplish, says defendant.

The patent’s specifications, in column 5, disclose the following:

. . . target detection processing apparatus identifies the highest 

scoring pixel in the image collection (e.g. call this highest 

scoring pixel X) and selects a local region around this pixel. 

Next, end members (e1. e2, . . . . en) are chosen by target 

detection processing apparatus 12 from this local region after 

the top statistical detection scores for the given target are 

masked out. The convex hull of these end members is a 

geometric model of the background for the detected pixel and 

is determined by target detection processing apparatus. The 

pixel is then “unmixed' by target detection processing 

apparatus by finding abundances a1, a2,..., ai, at, that give the 

best approximation of the pixel spectra as a linear combination 

of the background end members and the target.
12

The background portion of the pixel is

and the residual portion of the pixel is r X-b. The estimated 

target fill percentage of the pixel is a, and the unmixing error 

is given by the target detection processing apparatus 12 com 

paring the target spectra to the residual spectra using a metric, 

such as spectra angle or percentage.

‘489 Patent at 7. 

Defendant cites Mr. Stocker, its validity expert, for the proposition 

that these mathematical equations are only descriptions of the algorithm’s

functions, not the algorithm itself. It thus asserts that Mr. Stocker and 

POSITAs like him would be unable to determine precisely what is claimed 

in the limitations by terms such as “determining,” “identifying,” and 

“processing,” with the result that these claims are indefinite. Neither the 

claims nor the specifications define the terms, and the patent would be 

indefinite for lack of antecedent basis.

Plaintiff responds that “a lack of antecedent basis renders a claim 

invalid only when the claim term would not ‘reasonably be understood by 

persons of ordinary skill when read in light of the specification.’” ECF No.

204 at 27 (quoting Energizer Holdings v. ITC, 435 F.3d 1366, 1370 (Fed. 

Cir. 2006)). The law, according to plaintiff only requires enough specificity 

to prevent undue experimentation. Typhoon Touch Techs., Inc. v. Dell, Inc., 

659 F.3d 1376, 1385-86 (Fed. Cir. 2011) (discussing the “enablement” 

requirement of § 112). Plaintiff alleges that any POSITA would reasonably

understand the meaning of the ‘489 claims considering the specification’s 

description of the algorithm and cites its expert, Dr. Creed Jones, a professor 

of electrical and computer engineering, for support. In his report, Dr. Jones

states that the ‘489 patent has an “adequate corresponding structure”

supporting its claims, thus allowing a person of ordinary skill to reproduce

the algorithm without undue experimentation. ECF No. 201-2 at 123-139. 

Although plaintiff is correct that an exact copy of every part of the 

algorithm is not required to create a valid patent, sufficient “structure” of the 

invention, whether algorithm or otherwise, must be disclosed so that the 

patent terms’ meaning are ascertainable and the public is on notice of how to 
13

reproduce the invention. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 

F.3d 1376, 1385-86 (Fed. Cir. 2011). The Federal Circuit made clear, 

however, that, even when a computer executes the function, the law does not 

always require the source code or a detailed algorithm. Id. (citing Aristocrat 

Techs. Australia Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. 

Cir. 2008); Finisar Corp v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. 

Cir. 2008)). “A description of the function in words may ‘disclose, at least 

to the satisfaction of [a POSITA], enough of an algorithm to provide the 

necessary structure under §112.’” Id. at 1386 (quoting Finisar, 523 F.3d at 

1340). The parties rely on conflicting expert reports, creating a disputed 

material fact. Nat'l Westminster Bank, PLC v. United States, 69 Fed. Cl. 128,

147 (2005). Both parties’ motions for summary judgment on the issue of 

antecedent basis for means-plus-function indefiniteness are thus denied. The 

question of whether the ‘489 patent is indefinite must go to trial. We have 

considered all other presented arguments regarding patent validity and found 

none of them persuasive.

Conclusion

For the abovementioned reasons, plaintiff’s renewed motion is

granted in part and denied in part and defendant’s motion is denied. The 

patent is not indefinite due to a combined method and apparatus claims. The 

other issues of obviousness and indefiniteness, including the imbedded 

questions of fact and secondary indicia, must proceed to trial. A pretrial 

schedule has already been set by order on January 6, 2023.

s/ Eric G. Bruggink 

ERIC G. BRUGGINK

Senior Judge