NOTE: This disposition is nonprecedential

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## United States Court of Appeals for the Federal Circuit

2009-1087

ENCYCLOPAEDIA BRITANNICA, INC., Plaintiff-Appellant,

v. ALPINE ELECTRONICS, INC. and ALPINE ELECTRONICS OF AMERICA, INC., Defendants-Appellees, and DENSO CORPORATION and TOYOTA MOTOR SALES, U.S.A., INC., Defendants-Appellees, and AMERICAN HONDA MOTOR CO., INC., Defendant-Appellee, and GARMIN INTERNATIONAL, INC., Defendant-Appellee.

David G. Wille , Baker Botts LLP, of Dallas,Tex as, argued for plaintiff-appellant. With him on the brief were Matthew A. Hayenga , Scott F. Partridge and Michael Hawes , of Houston, Texas, and Kevin M. Sadler , of Austin, Texas. Christopher A. Harkins , Brinks Hofer Gilson & Lione, of Chicago, Illinois, argued for defendants-appellees Alpine Electr onics, Inc., et al. With him on the brief were Gary M. Ropski , Cynthia A. Homan , and Laura Beth Miller

.2 Paul R. Steadman , Kirkland & Ellis LLP, of Chicago, Illinois, argued for all defendants-appellees DENSO Corporat ion., et al, and for all appellees. With him on the brief was Shira J. Kapplin

. John T. Johnson , Fish & Richardson P.C., of New York, New York, for defendantappellee American Honda Motor Co., Inc. With him on the brief were Thomas S. McClenahan , of Minneapolis, Minnesota, and Robert E. Hillman , of Boston, Massachusetts. Raymond W. Mort, III , Shook, Hardy & Bacon LLP, of Kansas City, Missouri, for defendant-appellee Garmin International, In c. With him on the brief were George B. Butts and Courtney Paige Thornton Stewart , DLA Piper LLP (US), of Austin, Texas. Appealed from: United States District C ourt for the Western District of Texas Judge Lee YeakelNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1087 ENCYCLOPAEDIA BRITANNICA, INC., Plaintiff-Appellant,

v. ALPINE ELECTRONICS, INC. and ALPINE ELECTRONICS OF AMERICA, INC., Defendants-Appellees, and DENSO CORPORATION and TOYOTA MOTOR SALES, U.S.A., INC., Defendants-Appellees, and AMERICAN HONDA MOTOR CO., INC., Defendant-Appellee, and GARMIN INTERNATIONAL, INC., Defendant-Appellee.

Appeal from the United States District Court for the Western District of Texas in case no. 05-CV-359, Judge Lee Yeakel.

__________________________ DECIDED: December 4, 2009

__________________________ Before LOURIE, FRIEDMAN, and PROST, Circuit Judges

.PROST, Circuit Judge

. Appellant Encyclopaedia Britannica, Inc., (“B ritannica”) is the assignee of U.S. Patent No. 5,241,671 (“’671 patent”), which is directed to a computerized multimedia search system with multiple separate and independent entry paths for searching and retrieving textual and graphical information. The Appellees, Alpine Electronics, Inc., Alpine Electronics of America, Inc., Denso Corp., Toyota Motor Sa les, U.S.A., Inc., American Honda Motor Co., Inc., and Garmin International, Inc. (“Garmin”) (collectively, “Appellees”), manufacture and sell comput erized navigation syst ems. Britannica brought this infringement action against Appellees in the United States District Court for the Western District of Texas. On summary judgment, the district court held claim 1, the only independent claim, of the ’671 patent invalid for indefiniteness. The district court then dismissed Britannica’s infringement claims with respect to a second patent, U.S. Patent No. 7,051,018 (“’018 patent ”), without prejudice. Br itannica now appeals. For the reasons set forth below, we affirm

. BACKGROUND The ’671 patent was prosecut ed for four years prior to issuance by the U.S. Patent and Trademark Office (“PTO”). After a nine year reexam ination that was initiated by the Commissioner of Patent s, the PTO was reversed and ordered to grant the ’671 patent in a civil action in t he United States District Court for the District of Columbia pursuant to 35 U.S.C. § 145. The ’671 patent provides a user-friendly way to search a multimedia database with textual and graphical information. The invention enables users to find and obtain information quickly and efficiently, such as textually searching for information by

2009-1087 2entering search terms or by browsing a list of text items and select ing an item for which the user would like more info rmation, or graphically searching for information by moving around a map. The entry paths are interrelat ed “such that textual information is fully accessible from the graphical entry paths and graphical information is fully accessible from the textual entry paths ” without performing separate sear ches. For example, when a textual search is conduct ed, the system provides access to textual information of interest as well as any related graphical info rmation available, and vice versa. The user can click on the icon or label to retrieve the related information. Garmin filed a motion for summary judgment of invalidity alleging that two means-plus-function elements, i.e., “accessing means” and “first retrieving means,” in claim 1 of the ’671 patent we re indefinite under 35 U.S.C. § 112 ¶ 2. Claim 1, as amended during the reexaminat ion proceedings, recites: A computer search system for re trieving information, comprising: storing means for storing interrelated textual information and graphical information; said storing means including at least one database ; means for interrelating said textual and graphical information; a plurality of independently accessible and separately and independently usable entry path means for searching said stored interrelated textual and graphical information, said entry path means comprising: textual browse entry path means fo r textually browsing said textual information ; textual search entry path means for textually searching said textual information [and for retrieving interrela ted graphical information to said searched text]; and graphics search entry path means for graphically searching said graphical information [and for retrieving interrela ted textual information to said searched graphical information]; selecting means for providing a menu of said plurality of entry path means for selection; each of said textual search entry path means and graphics search entry path means including a processing means for executing inquiries provided by a user in order to search said textual and graphical information through each of said selected entry path means;

2009-1087 3each of said textual browse entry path means including means for allowing a user to select textual informati on from a predetermi ned list of textual information ; each of said textual search entry path means and graphics search entry path means including an indicating means for indicating a pathway that accesses information related in one of said independently accessible entry path means to information accessi ble in another one of said entry path means; each of said textual search entry path means and graphics search entry path means including an accessing means for providing access to said related information in said another entry path means; [and] said textual search entry path means including first retrieving means for retrieving said textual information and interrelated graphical information to said searched textual information ; said graphics search entry path means including second retrieving means for retrieving said graphical in formation and interrelated textual information to said searched graphical information; and output means for receiving search re sults from said processing means and said related information from said accessing means and for providing said search results and received information to such user. (alterations in original). T he district court held that wher e the disclosed structure is a computer, programmed to carry out the respective function, a specific algorithm must be disclosed in the specification to provide corresponding structure. The court found that the specification of the ’671 patent did not disclose such an algorithm for either of the claim terms “accessing means” or “first re trieving means.” Therefore, the court explained that claim 1 lacked sufficient corre sponding structure for both of these meansplus-function elements, which rendered the cl aim indefinite under 35 U.S.C. § 112 ¶ 2. After the district court granted Garmi n’s summary judgment motion and issued a final order, the court am ended the final judgment. The amended order dismissed without prejudice Britannica’s in fringement claims with respect to the ’018 patent, which had been added in an amended complaint. After the district court issued a second amended final judgment, which dismissed Appe llees’ counterclaims, the patent owner appealed.

2009-1087 4We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION On appeal, the parties agree that the two means-plus-function elements at issue in claim 1 of the ’671 patent, namely “accessi ng means” and “first re trieving means,” are governed by 35 U.S.C. § 112 ¶ 6. Britannica argues that these elements are not indefinite under 35 U.S.C. § 112 ¶ 2 for failu re to disclose an algorithm. Further, Britannica asserts that the district cour t judge abused his discretion when he dismissed sua sponte its infringement claims relating to the ’018 patent. I. Indefiniteness Indefiniteness is an issue of patent claim construction and a ques tion of law that we review de novo. Cordis Co rp. v. Boston Scientific Corp. , 561 F.3d 1319 (Fed. Cir. 2009). Means-plus-function claim limitations “shall be construed to cover the corresponding structure, material, or acts de scribed in the specific ation and equivalents thereof.” 35 U.S.C. § 112 ¶ 6. “During claim constructi on, the court must identify the claimed function and determine the corresponding structure disclosed in the specification.” IMS Tech., Inc. v. Haas Automation, Inc. , 206 F.3d 1422, 1430 (Fed. Cir. 2000). For computer-implemented inventions with means-plus-function claiming, the particular structure disclosed in the spec ification must be more than the general purpose computer or microprocessor. Aristocr at Techs. Austl. Pty Ltd. v. Int’l Game Tech. , 521 F.3d 1328, 1333 (Fed. Cir. 2008) (“Aristocrat II ”). As “general purpose comput ers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to

2009-1087 5perform a particular function does not limit t he scope of the claim to ‘the corresponding structure, material, or acts’ that perfo rm the function, as required by section 112 paragraph 6.” Id. Thus, we require “that the patentee disclose particular structure in the specification and that the scope of the patent claims be limit ed to that structure and its equivalents to avoid pure f unctional claiming.” Id. Where “the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general pur pose computer, but rather t he special purpose computer programmed to perform the disclosed algorithm.” Id. (quoting WMS Gami ng Inc. v. Int’l Game Tech. , 184 F.3d 1339, 1349 (Fed. Cir. 1999)). Indeed, the corresponding structure for such claims is the algorit hm disclosed in the specification. See id. ; Harris Corp. v. Ericsson Inc. , 417 F.3d 1241, 1249 (Fed. Cir. 2005) (citing WMS Gaming , 184 F.3d at 1348-49). “[T]he patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide t he necessary structure under § 112, ¶ 6.” Finisar Corp. v. DirecTV Group, Inc. , 523 F.3d 1323, 1340 (Fed. Cir. 2008);

see Aristocrat Techs. Austl. Pty Ltd. v. Multimedia Games, Inc. , 266 Fed. App’x 942, 946 (Fed. Cir. 2008) (“Aristocrat I ”). If the algorithm is not adequately disclosed in the specification, the claim is invalid for indefiniteness. 35 U. S.C. § 112 ¶¶ 2, 6; Aristocrat II , 521 F.3d at 1338. We turn first to Britannica’s argument that the means-plus-function element “first retrieving means” in claim 1 of the ’671 patent is not indefinite. Britannica asserts that the corresponding structure for this element is a general purpose computer performing the recited function of “retrieving said te xtual information and interrelated graphical information to said searched textual informa tion.” Britannica’s arguments suggest that

2009-1087 6the disclosure of corresponding structure withi n the patent is sufficient, regardless of whether it is implicit, explici t, or not required. Britannica contends that the specification is not indefinite with respect to this element because it: (1) implicitly discloses a class of algorithms, to a person of or dinary skill in the art, correspondi ng to the recited function, and implicit disclosure of structure is suffici ent; (2) discloses, at a minimum, a one-step algorithm for the recited function; and (3 ) need not disclose an algorithm where the computer function being performed is well k nown. We address each point in turn. The “first retrieving means” is a com puter program or function capable of retrieving textual and graphical information from a database and equivalents thereof. Britannica argues that the spec ification discloses sufficient corresponding structure for this element because a person of ordinary sk ill in the art would recognize that the specification inherently disclos es a class of algorithms for retrieving this information from a database on a general purpose computer. We disagree. As a preliminary matter, we have held t hat where the disclosed structure in a means-plus-function claim is a computer programmed to perform a function, the structure is a special purpose comput er programmed to perform the disclosed algorithm, not a general purpose computer. Id. at 1333; WMS Gaming , 184 F.3d at 1349. Furthermore, we have explained that an assertion, such as Britannica’s, even where supported by evidence showing that one of ordinary skill in the art could build the device claimed in the patent bas ed on the disclosure in the s pecification, conflates the disclosure requirement of § 112 ¶ 6 and t he enablement requirement of § 112 ¶ 1. Aristocrat II , 521 F.3d at 1336. “The understanding of one of skill in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus2009-1087 7function claim terms.” Lucent Techs., Inc. v. Gateway, Inc. , 543 F.3d 710, 719 (Fed. Cir. 2008) (citations omitted). “It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed f unction.” Aristocrat II , 521 F.3d at 1337. Indeed, where the patent, like the ’671 patent, does not disclos e an algorithm to perform the claimed function, it does not disclose suffi cient corresponding structure. See id. at 1333; Harris , 417 F.3d at 1249 (citing WMS Gaming , 184 F.3d at 1348-49). Britannica’s first argument also encom passes its contention that there is sufficient corresponding structure when the specif ication implicitly di scloses to a person of ordinary skill in the art a class of algorithms. In support, Britannica relies on In re Dossel , 115 F.3d 942 (Fed. Cir. 1997), and AllV oice Computing PLC v. Nuance Communications, Inc. , 504 F.3d 1236 (Fed. Cir. 2007). As evidence that the specification of the ’671 patent has such an implicit disclos ure, Britannica cites to its expert, Dr. Nathaniel Polish, w ho opined that interrelated information is retrieved from a database and “[b]y indicating that interrelat ed information is stored in a database and retrieved in a database, the specification di scloses to one of ordi nary skill in the art a class of algorithms whereby textual informa tion and related graphical information could be retrieved from a database.” However, the cases upon which Britanni ca relies are distinguishable here because algorithms were in fact disclosed in those cases. For example, in Dossel , the specification disclosed known algorithms even though it did exp licitly mention a computer. 115 F.3d at 946. Similarly, in AllVoice , the specification disclosed a sufficient algorithmic st ructure. 504 F.3d at 1245-46. In sum, Dossel and AllVoice are

2009-1087 8consistent with our holdi ng, in Aristocrat II , that means-plus-function limitations for computer-implemented functions require that some algorithm be disclosed in the specification. Aristocrat II , 521 F.3d at 1337. It is the suffi ciency of the algorithm that may be determined by one of ordi nary skill in the art. Id. Therefore, claim 1 of the ’671 patent must explicitly disclose an algorithm in the specification for performing the claimed function for a computer-implemented invention to have sufficient corresponding structure for the “first retrieving means” limit ation. Such an algorithm is not disclosed here because the specification fails to disclose anything more than a computer designed to perform a particular function—re trieving textual and graphical information from a database. Second, Britannica contends that the specification does sufficiently disclose, at a minimum, a “one-step” algorit hm for performing the recited function of retrieving information from a database. Britannica argues that “the specification discloses the retrieval of information performed by a computer.” In Aristocrat II , we reiterated that the “corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id. at 1333 (citations omitted). Further, we explained that the patentee must disclose such structure in the specification and the scope of the patent claims must be limited to that structure, and its equivalents, to avoid pure functional claiming. Id. Britannica’s purported “one- step” algorithm, however, is not an algorithm at all. Rather, it is simply a recitation of the claimed function. At best, the specification for the ’671 patent discloses only the functional resu lt claimed by this limitation. Neither t he written portions of the specification, nor the specification’s figures, disclose any structure or algorithm employed by the system. Thus, Britannica’s

2009-1087 9proposed one-step algorithm am ounts to pure functional claiming, which does not comply with the disclosure requi rement of § 112 ¶ 6. Id. Indeed, it is irrelevant that one of ordinary skill in the art would understand t he specification to disclose a “one-step algorithm” for performing the function and t eaching how to implement the claimed device on a computer, where, as here, the specification does not disclose a program or algorithm. Accordingly, this argument too fails. Finally, Britannica asserts, in the alter native, that the specification need not disclose any algorithm so long as the comput er function being perform ed is well known. Britannica asserts that we s hould not extend Aristocrat II to well-known computer functions, such as retrieving data from a database, because the disclosure of a general purpose computer to perform thes e functions is sufficient to satisfy § 112. Contrary to Britannica’s contention, we are not broadening Aristocrat II here. Rather, we are applying our previous holding t hat when a means-plus-function limitation is a computer programmed with software to carry out the claimed function, a recitation of the corresponding algorithm is required to provi de sufficient disclosur e of structure under § 112 ¶ 6 to avoid indefiniteness under § 112 ¶ 2. See id. at 1337-38. Indeed, it is well settled that the specification must di sclose “the algorithm that transformed the general purpos e microprocessor to a ‘special purpose computer programmed to perform the discl osed algorithm,’” regardless of its simplicity. Id. at 1338 (quoting WMS Gaming, 184 F.3d at 1349). Because claim 1 of the ’671 patent fails to explicitly disclose any algorithm or any class of algorithms in the specification for performing the claimed function for a compute r-implemented invention, it lacks sufficient

2009-1087 10corresponding structure for the “f irst retrieving means” limitati on. 35 U.S.C. § 112 ¶ 6. Thus, the patent is invalid for indefiniteness. 1 35 U.S.C. § 112 ¶ 2. II. Dismissal of Unrelated Claims We review a dismissal without prejudice of a cause of action for infringement under the law of the pertinent regional circuit. L.E.A. Dynatech, Inc. v. Allina , 49 F.3d 1527, 1530 (Fed. Cir. 1995). The Fifth Circui t, the pertinent regional circuit here, reviews a dismissal without prejudice for abuse of discretion. See Ikospentakis v. Thalassic S.S. Agency , 915 F.2d 176, 177 (5th Cir. 1990). A reasonable likelihood of prejudice supports a finding of abuse of di scretion. United States v. Simmons , 374 F.3d 313, 320 (5th Cir. 2004). Britannica argues that the district court abused its di scretion when it dismissed without prejudice the ’018 patent claims from the instant action sua sponte and cited no legal authority. Britannica contends that it could be unfairly prejudiced because Appellees could pursue a laches defense. After the district court entered the judgm ent dismissing the claims arising under the ’018 patent, it considered Britannica’s argum ents, by way of a motion to amend, that dismissal was improper and could harm Britannica . The district c ourt, acting within its broad discretionary powers to control its do cket, determined that dismissal of these unrelated ’018 patent claims wit hout prejudice was “judicially efficient” and would “not unfairly prejudice” Britannica. After fili ng its notice of appeal here, Britannica was

1 In light of our determination that the specification fails to provide sufficient structure for the “first retrieving means” limitation, we need not reach the issue of whether the “accessing means” limitation in cl aim 1 also renders the patent indefinite under § 112 ¶ 6.

2009-1087 112009-1087 12 granted leave and amended its complaint to asse rt the ’018 patent claims in a pending case, case no. 06-CV-578, in the same distri ct court, before the same district judge, and against the same parties. Thus, because Britanni ca has failed to show that there is a reasonable likelihood of harm, Britannica has not met the high standard for demonstrating that the district court abused its discretion here. CONCLUSION For the reasons set forth above, we affirm t he district court’s finding that claim 1 of the ’671 patent is invalid for indefiniteness. We conclude that it was not abuse of discretion to dismiss the ’018 patent claims without prejudice.