NOTE: This disposition is nonprecedential.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. 

David G. Wille, Baker Botts LLP, of Dallas,Texas, 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 Electronics, 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 Corporation., 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, Inc. 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 Court for the Western District of Texas 

Judge Lee Yeakel
NOTE: This disposition is nonprecedential.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., (“Britannica”) 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 Sales, U.S.A., Inc., 

American Honda Motor Co., Inc., and Garmin International, Inc. (“Garmin”) (collectively, 

“Appellees”), manufacture and sell computerized navigation systems. 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. Britannica now appeals. For 

the reasons set forth below, we affirm. 

BACKGROUND 

The ’671 patent was prosecuted for four years prior to issuance by the U.S. 

Patent and Trademark Office (“PTO”). After a nine year reexamination that was initiated 

by the Commissioner of Patents, the PTO was reversed and ordered to grant the ’671 

patent in a civil action in the 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 2
entering search terms or by browsing a list of text items and selecting an item for which 

the user would like more information, or graphically searching for information by moving 

around a map. The entry paths are interrelated “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 searches. For example, when 

a textual search is conducted, the system provides access to textual information of 

interest as well as any related graphical information 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 were indefinite under 35 U.S.C. § 112 ¶ 2. Claim 1, as 

amended during the reexamination proceedings, recites: 

A computer search system for retrieving 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 for textually browsing said textual 

information;

textual search entry path means for textually searching said textual 

information [and for retrieving interrelated graphical information to said 

searched text]; and

graphics search entry path means for graphically searching said graphical 

information [and for retrieving interrelated 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 3
each of said textual browse entry path means including means for allowing 

a user to select textual information from a predetermined 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 accessible 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 information and interrelated textual 

information to said searched graphical information; and

output means for receiving search results 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). The district court held that where 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 retrieving means.” Therefore, the court 

explained that claim 1 lacked sufficient corresponding structure for both of these meansplus-function elements, which rendered the claim indefinite under 35 U.S.C. § 112 ¶ 2. 

 After the district court granted Garmin’s summary judgment motion and issued a 

final order, the court amended the final judgment. The amended order dismissed 

without prejudice Britannica’s infringement 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 Appellees’ counterclaims, the patent owner 

appealed. 

2009-1087 4
We 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 “accessing means” and “first retrieving 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 failure to disclose an algorithm. Further, 

Britannica asserts that the district court 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 question of law that 

we review de novo. Cordis Corp. 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 described in the specification and equivalents 

thereof.” 35 U.S.C. § 112 ¶ 6. “During claim construction, 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 specification must be more than the general 

purpose computer or microprocessor. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game 

Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (“Aristocrat II”). 

As “general purpose computers can be programmed to perform very different 

tasks in very different ways, simply disclosing a computer as the structure designated to 

2009-1087 5
perform a particular function does not limit the scope of the claim to ‘the corresponding 

structure, material, or acts’ that perform 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 limited to that structure and its 

equivalents to avoid pure functional claiming.” Id. Where “the disclosed structure is a 

computer, or microprocessor, programmed to carry out an algorithm, the disclosed 

structure is not the general purpose computer, but rather the special purpose computer 

programmed to perform the disclosed algorithm.” Id. (quoting WMS Gaming Inc. v. Int’l 

Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). Indeed, the corresponding 

structure for such claims is the algorithm 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 the 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 textual information and interrelated graphical 

information to said searched textual information.” Britannica’s arguments suggest that 

2009-1087 6
the disclosure of corresponding structure within the patent is sufficient, regardless of 

whether it is implicit, explicit, 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 ordinary skill in the art, corresponding to the recited function, 

and implicit disclosure of structure is sufficient; (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 known. We address each point in turn. 

The “first retrieving means” is a computer program or function capable of 

retrieving textual and graphical information from a database and equivalents thereof. 

Britannica argues that the specification discloses sufficient corresponding structure for 

this element because a person of ordinary skill in the art would recognize that the 

specification inherently discloses 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 that where the disclosed structure in a 

means-plus-function claim is a computer programmed to perform a function, the 

structure is a special purpose computer 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 based on the disclosure in the specification, conflates the 

disclosure requirement of § 112 ¶ 6 and the 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 7
function 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 function.” Aristocrat II, 521 F.3d at 1337. Indeed, where the 

patent, like the ’671 patent, does not disclose an algorithm to perform the claimed 

function, it does not disclose sufficient 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 encompasses its contention that there is 

sufficient corresponding structure when the specification implicitly discloses 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 AllVoice 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 disclosure, Britannica cites to its 

expert, Dr. Nathaniel Polish, who opined that interrelated information is retrieved from a 

database and “[b]y indicating that interrelated information is stored in a database and 

retrieved in a database, the specification discloses to one of ordinary skill in the art a 

class of algorithms whereby textual information and related graphical information could 

be retrieved from a database.” 

However, the cases upon which Britannica 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 explicitly mention a 

computer. 115 F.3d at 946. Similarly, in AllVoice, the specification disclosed a 

sufficient algorithmic structure. 504 F.3d at 1245-46. In sum, Dossel and AllVoice are 

2009-1087 8
consistent with our holding, 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 sufficiency of the algorithm that 

may be determined by one of ordinary 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” limitation. Such an algorithm is not disclosed 

here because the specification fails to disclose anything more than a computer 

designed to perform a particular function—retrieving textual and graphical information 

from a database. 

 Second, Britannica contends that the specification does sufficiently disclose, at a 

minimum, a “one-step” algorithm 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 result claimed by this 

limitation. Neither the written portions of the specification, nor the specification’s 

figures, disclose any structure or algorithm employed by the system. Thus, Britannica’s 

2009-1087 9
proposed one-step algorithm amounts to pure functional claiming, which does not 

comply with the disclosure requirement of § 112 ¶ 6. Id. Indeed, it is irrelevant that one 

of ordinary skill in the art would understand the specification to disclose a “one-step 

algorithm” for performing the function and teaching 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 alternative, that the specification need not 

disclose any algorithm so long as the computer function being performed is well known. 

Britannica asserts that we should 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 these 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 that 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 provide sufficient disclosure 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 disclose “the algorithm that 

transformed the general purpose microprocessor to a ‘special purpose computer 

programmed to perform the disclosed 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 computer-implemented invention, it lacks sufficient 

2009-1087 10
corresponding structure for the “first retrieving means” limitation. 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 Circuit, 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 discretion. United States v. Simmons, 374 F.3d 

313, 320 (5th Cir. 2004). 

Britannica argues that the district court abused its discretion 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 judgment dismissing the claims arising under 

the ’018 patent, it considered Britannica’s arguments, by way of a motion to amend, that 

dismissal was improper and could harm Britannica. The district court, acting within its 

broad discretionary powers to control its docket, determined that dismissal of these 

unrelated ’018 patent claims without prejudice was “judicially efficient” and would “not 

unfairly prejudice” Britannica. After filing 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 claim 1 also renders the patent indefinite 

under § 112 ¶ 6. 

2009-1087 11
2009-1087 12

granted leave and amended its complaint to assert the ’018 patent claims in a pending 

case, case no. 06-CV-578, in the same district court, before the same district judge, and 

against the same parties. Thus, because Britannica 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 the 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.