                       NOTE: This disposition is nonprecedential.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.
       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 defendant-
appellee 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




                                            2
                      NOTE: This disposition is nonprecedential.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 means-

plus-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-plus-




2009-1087                                     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
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.




2009-1087                                   12
