“General purpose, programmable microprocessor” ne constitue pas un support suffisant pour “control means” aux US

Dans la cause Aristocrat Tech. Australia PTY Limited v. International Game Tech. (march 28, 2008), la United States Court of Appeals for the Federal Circuit a statué que le mémoire descriptif n’était pas suffisant en ce qui à trait à un “general purpose, programmable microprocessor” pour satisfaire au paragraphe 6 de l’article 112 en regard à un “game control means” ou “control means” dans la revendication 1 du brevet US 6,093,102.

Selon le juge:

. . . Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for means-plus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ‘102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.
Although the examples given in the ‘102 patent might enable one of ordinary skill to make and use the invention, they do not recite the particular structure that performs the function and to which the means-plus-function claim is necessarily limited.
Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made clear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

. . . Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a “special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, 184 F.3d at 1349. Because the district court correctly held that was not done in this case, we uphold the judgment of the district court.

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