# United States Court of Appeals **for the Federal Circuit**

______________________ IBORMEITH IP, LLC, Plaintiff

- Appellant,

v.

MERCEDES

- BENZ USA, LLC, AND DAIMLER AG, Defendants

- Appellees.

______________________
2013

- 1007

______________________ Appeal from the United States District Court for the District of New Jersey in No. 10

- CV

- 5378, Judge Faith S. Hochberg.

______________________
Decided: October 22 , 2013

______________________
P ATRICK F. S OLON , Niro, Haller & Niro, of Chicago, I llinois, argued for plaintiff

- appellant. With him on the brief was O LIVER D. Y ANG

.
S COTT W. D OYLE , Shearman & Sterling, LLP, of Washington, DC, argued for defendants

- appellees. With him on the brief were J ONATHAN R. D E F OSSE and M ICHEL E. S OUAYA

.

______________________
Be fore L OURIE , P ROST , and T ARANTO , Circuit Judges.IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 2

T ARANTO , Circuit Judge

. Ibormeith IP, LLC, the as signee of U.S. Patent No. 6,313, 749, appeals a district court’s grant of summary judgment of indefiniteness in favor of defendants Me rcedes

- Benz USA, LLC
, and Daimler AG (collectively, “Mercedes”) . We affirm.

B ACKGROUND U.S. Patent No. 6,313,749
, entitled “Sleepiness Dete ction for Vehicle Driver or Machine Operator ,” addresses the monitoring of conditions affecting , or behavior reflec ting, a vehicle driver ’s sleepiness and the issuing of a warning to the driver before the driving is unduly i mpaired. ’ 749 patent, col. 1, lines 5

- 17 ; id. at col 2, lines 55

- 62

. The monitor disclosed in the patent may take into account multiple factors associated with sleepiness
, including natural body

- clock ( circadian ) rhythm
, the magnitude and number of corrective steering actions the driver is taking
, the cabin temperature, the monotony of the road, and how long the driver has been driving. Id. at

c ol. 2, lines 55

- 62 ; see id. at col. 12, line 25 through line 39

. Some factors involve actions or conditions at the moment, like steering behavior and light conditions, which are measured by sensors in the vehicle. See i d. at col. 3, lines 43

- 45; id. at c ol. 6, lines 14

- 17; id. at col. 6, lines 61

- 64

. Others involve general or driver

- specific background information, such as circadian rhythm or a driver’s recent sleep patterns and alcohol consumption
, which are not measured by sensors but must be input into the monitor by other means ( e.g. , by the programmer or the driver )

. Id. at col. 3, lines 45- 49. The factors are “individually weighted, according to contributory i mportance, and combined in a computational decision algorithm or model, to provide a warning indication of sleepiness.” Id. at col. 3, lines 39

- 42. Claims 1 and 9 of the ’749 patent are the two ind ependent claims at issue

. Both claim s contain a “comput a-IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 3

tional means” element that is undisputedly subject to the requirements of 35 U.S.C. § 112 (f) for claim s to means of performing specified functions

. 1 Claim 1 requires that t he means take account of sleepiness- related time -of- day information to determine the likelihood of driver sleep iness and to produce an output that, according to a sep arate claim element, triggers a warning. ’749 patent, col. 16, lines 21 -30

. Claim 1 reads: A sleepiness monitor for a vehicle driver, or m achine operator, comprising: a sensor for sensing a driver or operator control input; a memory for storing an operational model that includes a physiological reference model of driver or operator circadian rhythm pattern(s) and a vehicle or m achine operating model or algorithm; computational means for weighting the operational model according to time of day in relation t o the driver or operator circ adian rhythm pattern(s) and for deriving, from the weighted model, driver or oper ator sleepiness condition and producing an output determined thereby; and a warning indicator triggered by the co mputational means output, to prov ide a

1 When this case arose, what is now section 112(f) was designated paragraph 6 of 35 U.S.C. § 112. T he Leahy

– Smith America Invents Act, Pub. L. No. 112

- 29, 125 Stat. 284 (2011) , changed the internal organization of section 112

. It made no other change of relevance to this appeal. For convenience we refer to section 112(f).IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 4

warning indicator of driver or operator sleepiness.
Id. at col. 16, lines 13

- 30. Whereas claim 1 does not specify what driver conduct or other conditions may factor into the determination along with sleepiness

- related time -of- day information, claim 9 focuses on the driver’s steerin g. Claim 9 reads: A sleepiness monitor for a driver and vehicle, comprising: a sensor for sensing a steering movement, about a reference position; a memory, for storing a circadian rhythm pattern or time -of- day physiological refe rence profile of pre

- disposition to sleep iness; and computational means for computing stee ring transitions and weighing that comp utation according to time of day, to provide a warning indication of driver sleepiness.
Id. at col. 16, lines 50

- 61.
Ibormeith sued Mercedes for infringing claims 1, 5, 8, and 9 of the ’749 pat ent

. Before and at a claim

construction hearing held on April 25, 2012
, Mercedes argued that the means

- plus

- function “computational means” limitations in independent claims 1 and 9 were indefinite. (If so, the dependent claims 5 and 8 would a lso be invalid, because they incorporate the elements of independent claim 1.) The district court reserved its ruling on claim construction and indicated that a motion for summary judgment c oncerning indefiniteness should be pursued as a threshold issue

. With the parties ’ agre ement, the court directed that expert discovery take place on that issue.IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 5

That process occurred, and Mercedes moved for su mmary judgment of indefiniteness . On September 5, 2012, after receiving the parties ’ brief s , the district court ruled that the asserted claims were invalid because the “comp utational means” limitations were indefinite

. Ibormeith IP, LLC v. Mercedes

- Benz USA, LLC , 889 F. Supp. 2d 677 (D.N.J. 2012). The court granted summary judgment for Mercedes.
To comply with section 112(f), the specification of Ibormeith’s patent has to disclose a structure for perfor ming the functions claimed in the “computational means” limitation, the statute providin g that the claim limitation covers that disclosed structure and its equivalents. If there is no such structure, the claim limitation is indefinite
, i.e. , fails to “particularly point[] out and distinctly claim [] ” the invention , because there is insufficie nt defin ition of something that , by virtue of section 112(f)
, is incorporated into the claim

. See
, e.g. , Function Media, LLC v. Google, Inc. , 708 F.3d 1310, 1319 (Fed. Cir. 2013) ; Blackboard, Inc. v. Desire2Learn Inc. , 574 F.3d 1371, 1382

- 83 (Fed. Cir. 2009)

. Ibormeith argued that the required structure is an algorithm , or any of several algorithms, it said could be found in three portions of the specification : (1) column 2, lines 55

- 62; (2) column 3, lines 5- 30; and (3) Table 10

. Ibormeith , 889 F. Sup p. 2d at 685. The district court held that th o se passages are in adequate to disclose the needed structure. As to claim 1, t he district court conclude d that th e ci ted passages did not disclose an algorithm for “weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving from the weighted model, driver or operator sleepiness condition and producing an output determined thereby. ” Id. at 685

- 91 . The court explained that column 2, lines 55

- 62
, and column 3, lines 5

- 30
, described the claimed functions but did “not disclose the algorithm by which the computational means performs those fun c-IBORMEITH IP , LLC v. MERCEDES

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tions.” Id. at 685

- 86. The court also concluded that Table 10 did not disclose an algorithm for performing all of

c laim 1’s “computational means” functions. Id. at 686

- 90

. It reason ed that
, although one skilled in the art might understand Table 10 , a long with Figures 3 a nd 17
, to disclose a structure corresponding to the “weighting the operational model” function, Table 10 does not disclose an algorithm for deriving a score for “driver . . . sleepiness condition ” or an “output.” See id . at 687

- 90. Even putting aside Ibormeith’s insistence that the various elements listed in Table 10 are merely options for inclusion in a calculation, the district court concluded: “Neither Table 10 nor any other clearly identified portion of the specific ation states the steps to obtain the listed elements’ scores, or how to weight them according to their relative i mportance.” Id. at 687

- 88.
The district court also concluded that claim 9 ’s “co mputational means” limitation was indefinite because the specification d oes not contain an algor ithm that adequat ely provides structure for the claimed function s

. Id. at 69 1- 93

. The court reasoned that, although Table 10 appear s to disclose an algorithm for the “computing steering transitions” function of claim 9, the specification “fail s to disclo se the steps necessary to actually perform th at suggested algorithm.” Id. at 692. The court rejected Ibormeith’s argument that no algorithm is required for the “providing a warning indication” function because that function is intended to be carried out by a visual display panel (hardware) and not the computational

means. Id. at 693. The court stated: the specification does “not explain how the monitor determines when the computation of steering transitions and t ime of day weighing leads to the issuance of a warning.” Id. Ibormeith appeals. We have jurisdiction under 28 U.S.C. 1295(a)(1).IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 7

D ISCUSSION Ibormeith recognizes that the structure required for “computational means” in claims 1 and 9 must be an algorithm

— a sequence of computationa l steps to follow

— that must be found in the specification. See Typhoon Touch Tech s. , Inc. v. Dell, Inc. , 659 F.3d 1376, 1384 (Fed. Cir. 2011) ; In re Freeman , 573 F.2d 1237, 1245 (C .C.P.A. 1978)

. It is clear, as the district court ruled, that the only substantial question is whether such an algorithm is found in Table 10, along with Figures 3 and 17 and any other specification material that may clarify the meaning of Table 10. As Ibormeith agrees, whether there is ad equate disclosure is a question of law that we decide de

novo

. Typhoon Touch , 659 F.3d at 1383.
S ection 112(f ) allow s patentees to put structural d etails in to the specification and build into the literal cove rage of the claim a certain scope for equivalents in performing a de fined function

. See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1310 (Fed. Cir. 1998). Th e price of using th is 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 partic ularized 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 —u nderstandable by t he implementer

. S ee AllVoice Comp u ting PLC v. Nuance Comm’cns, Inc. , 504 F.3d 1236, 1245

- 46 (Fed. Cir. 2007). H ere , we conclude, the disclosed algorithm does not adequately define the structure.IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 9

Related to the algorithm are Figures 3 and 17 of the ’749 patent. Figure 3 is a graph depicting the likelihood of falling asleep at different times during the day. ’749 patent at Fig. 3; id. at col. 5, lines 25

- 27. Figure 17, shown below
, appears to reflect the same reference mo dels as Figure 3 . It too depicts how sleepiness varies depending on time of day
, but it includes three warning lines meant to represent warning threshold levels.

Id. at Fig. 17; id. at col. 5, lines 50

- 52. In Ibormeith’s view, Table 10 identi fies factors that may be related to driver drowsiness, but there is no disclosure of even a single concrete relationship between the various factors that are used to compute an outcome to warn of driver drowsiness. Ibormeith’s expert, Dr. Jochem, opined that the algorithm is not based on simple adding of already weighted inputs. In his expert report, Dr. Jochem described the disclosed computational means as an algorithm “template.” J.A . 617

- 18 ¶ 54 (“I believe that the patent authors meant for Table 10 t o be used as a template for constructing a specific formula(s) or equ ation(s) to compute sleepiness.”); see also J.A . 618 ¶ 57 (explaining that while circadian rhythm pattern and corrective steering actions are mandatory factors forIBORMEITH IP , LLC v. MERCEDES

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claims 1 and 9, respect ively, “[t]he other terms are o ptional” and that “some terms are less important than others”); J .A . 621 ¶ 70 (“it is very important to note that it is obvious in the patent specification that the examples given are meant to be just that

— examples of a possi ble way to implement the described algorithm”). He further sta ted that the ’749 patent requires one who implements the drowsiness detection system to determine which factors to use in the algorithm, how to obtain them, how to weigh t them (for example, by multiplication or add ition), how to combine them , and when to issue the war ning. See, e.g.
, J .A

. 621 ¶ 71 (“the use of specific numerical values in the context of the algorithm description does not limit the algorithm to use only th ose values”) ; J .A

. 662 ( testifying that the method of weighting, either by adding or multiplying, is determined by the implementer); J .A

. 686 (testifying at his deposition that the claim terms are optional) ; J .A

. 660 (Dr. Jochem testifying that weighting

c ould be performed by multiplication or a function that has some linear or nonlinear terms); J .A

. 666 (Dr. Jochem testifying that weighting can mean “the value you would [as] sign to a constant value in an algorithm,” “the output of a function that has some linear and nonlinear terms,” or multiplication). In determining that the specification does not sufficiently disclose an algorithm providing the structure for “computational means,” we take Ibormeith and its expert at their word in insisting on the breadth, rather than specificity, of what Table 10 discloses. With means

- plus

function claiming, the narrower the disclosed structure in the specification, the narrower the claim coverage. To succeed ultimately in proving that the “computational means” element s cover the accused Mercedes products (vehicles with a feature called Attention Assist)
, Ibormeith’s argument therefore needs to be based on a reading of Table 10 that is broad enough to reach the accused prod ucts. With consequences of such importance,IBORMEITH IP , LLC v. MERCEDES

- BENZ USA 11

Ibormeith’s position as to Table 10’s breadth is fairly treated as a binding admission. That position, however, fails in the necessary attempt to steer a course that permits proof of infringement yet avoids invalidity. Even if Table 10 could be read as
pr oviding a single, definite algorithm that simply adds all of the disclosed variables

— a possibility we need not rule on—Ibormeith and its expert assert that it does not so provide
, but instead equally covers all ways of taking into account the listed variab les, or some subset of the vari ables, that a skilled artisan would find appropriate. Such a reading of Table 10 leaves the disclosure without a n algorithm whose terms are defined and understandab le

. If, as Dr. Jochem testified, the algorithm in the ’749 patent is not disclosing addition, then the S circ factor in Table 10 merely indicates that weighting based on circ adian patterns occurs. Neither Table 10 nor the associated tables disclose how to perform the weighting of the S circ or any other factor. Table 10 merely list s inputs without specifying any single formula or function or algorithm defining the contribution of any of the inputs to a comp utation. A s recognized by Mercedes’ s expert Dr. Knipling,

a person of ordinary skill in the art “would need to devise his or her own method for determining driver drowsiness based on the factors generally disclosed in Tables 10, 11 and 12 .” J .A

. 805 ¶ 19.
With its insistence that Table 10 does not disclose a rriving at a warning threshold by simply adding the di sclosed factors

— e.g. , S circ (circadian

- rhythm factor ), S zerox (steering direction changes) , and S rms (magnitude of corrective steering actions)

— Ibormeith cannot rely on Figures 3 and 17 to supply the structure that Table 10 does not. Ibormeith does no t argue that the weighting function of claim 1 is limited to a structure allegedly disclosed in Figure s 3 and 17 , which in any event do not specify anything about other inputs

. At best, the two figures provide raw circadian information that a person ofIBORMEITH IP , LLC v. MERCEDES

- BENZ USA 12

ordinary skill in the art could use to design his or her own method of weighting . A description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable. Ibormeith’s argument that the disclosed algorithm provides as much specificity as the patents in Typhoon Touch , 659 F.3d 1376
, and WMS Gaming , Inc. v . Int’l Game Tech

. , 184 F.3d 1339 (Fed. Cir. 1999)
, is incorrect

. In Typhoon Touch
, the claim term at issue was “means for

cross

- referencing said responses with one of said libraries of said possible responses.” 659 F.3d at 1383. This court found the disclosed algorithm sufficient because the specification stated that “cross

- referencing entails the st eps of data entry, then storage of data in memory, then the search in a library of responses, then the determin ation if a match exists, and then reporting action if a match is found.” Id. at 1386. The descri bed process of straigh tforward matching of use r- entered data with data in
memory was a routine, concrete algorithm.
I n WMS Gaming
, the claim term at issue

— concerning slot machines that use a reel for generating responses to what in a traditional slot machine is a user ’s pull of the lever— was “ means for assigning a plurality of numbers representing said angular positions of said reel, said plurality of numbers exceeding said predetermined nu mber of radial positions such that some rotational positions are represented by a plurality of numbers. ” 184 F. 3d at 1346

- 47. A figure in the patent depicted a series of co ncentric circles (like a dart board) that showed the rel ationship between 44 stop positions on a virtual reel with 22 stop positions on a physical reel. See id. at 1347

- 48; see also U.S. Patent No. 4,448,419 at Fig. 6. This court found that an algorithm was sufficiently disclosed because the relationship between the virtual stop positions and the physical stop positions was limited by the figure

. See id. at 134 9- 50

. WMS Gaming , lik e Typhoon Touch , didIBORMEITH IP , LLC v. MERCEDES

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not rely on a specification passage like the one in the ’749 patent , which , Ibormeith itself insists, does not indicate which factors should be used and in what combination and with what relative weight s

. For these reasons, the judgm ent of the district court is affirmed.
AFFIRMED