By Eric Schweibenz
On May 4, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 29 in Certain Printing and Imaging Devices and Component Thereof (Inv. No. 337-TA-690) granting-in-part Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motion for summary determination of invalidity of certain means-plus-function or step-plus-function claims of U.S. Patent Nos. 6,388,771 (the ‘771 patent), 6,209,048 (the ‘048 patent) and 5,764,866 (the ‘866 patent) asserted by Complainants Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively “Ricoh”).

The motion focused on various limitations of the asserted claims, each of which Oki Data argued should be construed under 35 U.S.C. § 112, ¶ 6.  Oki Data argued that each of the limitations implements a computer-based function, thus requiring the specifications to disclose a computer or processor containing a specific algorithm for performing the claimed function, which Oki Data asserted the specifications failed to disclose in violation of § 112, ¶ 2.  For the reasons explained below, ALJ Rogers granted the motion in part, finding claim 3 of the ‘771 patent invalid for indefiniteness, but otherwise denied the motion.

Ricoh first argued that it was not necessary for the specifications to disclose algorithms to implement the claimed functions because the case law relied on by Oki Data relates only to the situation where a general purpose computer is adapted to become a special purpose computer via a software algorithm, whereas Ricoh’s patents are directed to “special purpose devices” whose special purposes are expressly stated in the patents, not to transforming general purpose computers into special purpose computers.  ALJ Rogers was not persuaded by Ricoh’s argument, observing that the relevant case law makes clear that the disclosure of an algorithm in the specification is necessary for computer-implemented means-plus-function limitations, and that a special purpose computer is one programmed to perform particular functions pursuant to instructions from program software.  Thus, ALJ Rogers found that for the computer-implemented means-plus-function limitations, Ricoh must demonstrate that the specifications disclose sufficient structure in the form of a computer or microprocessor programmed to perform a specific algorithm.

Ricoh then argued that Oki Data waived the indefiniteness defense with respect to the “means for setting” and “means for preparing” limitations of the ‘771 patent claims and the “test means” and “deleting means” limitations of the ‘866 patent claims based on Oki Data’s entry in the Joint Claim Construction Statement.  ALJ Rogers disagreed, stating the disclosure of affirmative defenses such as indefiniteness are more appropriately found in, e.g., an answer to a complaint, an interrogatory response, or an expert report, and are not generally addressed in a Joint Claim Construction Statement.

With respect to the ‘771 patent, ALJ Rogers found the following:  (1) the specification discloses sufficient structure to support the “means for setting an operation code” limitation of claim 1 in the form of a system control unit 11 programmed to perform an algorithm, (2) the specification does not disclose sufficient structure to support the “means for preparing file data” limitation of claim 3 because the specification does not adequately describe an algorithm processed by system control unit 11, (3) it is unclear whether the language “a code unit for setting” in claim 7 is a means-plus-function limitation as Oki Data and the Committee Investigative Staff (“OUII”) proposed, since it cannot be determined at this stage whether the claim language “is used in common parlance or by persons of skill in the pertinent art to designate structure” as required by Federal Circuit precedent, and thus the record is inadequate to sustain summary determination in favor of Oki Data, and (4) none of the parties will be allowed to assert that the “setting an operation code” limitation of claim 13 is a step-plus-function limitation subject to the requirements of § 112, ¶ 6 since none of the parties offered a proposed construction for this limitation in the Joint Claim Construction Statement.

With respect to the ‘048 patent, ALJ Rogers found that Oki Data had not overcome the presumption that the “server” limitations of claims 1, 19 and 33 are not means-plus-function limitations, and that, like claim 7 of the ‘771 patent, final resolution of the indefiniteness issue at the summary determination stage was therefore inappropriate.  ALJ Rogers noted that while Oki Data did not assert that the “server” limitations were means-plus-function limitations in the Joint Claim Construction Statement, the Staff asserted that the “server” limitation is a means-plus-function limitation in at least claim 19, so Oki Data may therefore advocate for OUII’s claim construction position regarding “server” in any asserted claim unless it is otherwise demonstrated that the patentee intended “server” to have different meanings in different claims.

With respect to the ‘866 patent, ALJ Rogers found that the specification discloses sufficient structure to support the “test means” limitation of claim 6 and the “deleting means” limitation of claim 8 in the form of the flowcharts and or language that adequately describes an algorithm to perform the relevant function using the computer structure disclosed in the specification.