     In the United States Court of Federal Claims
                                No. 10-769C
                           (Filed: July 18, 2014)

*******************************
SPA SYSPATRONIC AG,


              Plaintiff,
v.
                                          Patents; Means-plus-function
THE UNITED STATES,                        limitations; 35 U.S.C. § 112;
                                          Indefiniteness.
              Defendant,

       and

GEMALTO, INC.

           Third-Party Defendant.
*******************************

       Charles P. Kennedy, Washington, DC, for plaintiff.

      David M. Ruddy, United States Department of Justice, Civil Division,
Commercial Litigation Branch, Washington, DC, with whom were Stuart F.
Delery, Assistant Attorney General, and John Fargo, Director, for defendant.

       Brian A. Rosenthal, Washington, DC, for third-party defendant.

                                 OPINION

BRUGGINK, JUDGE.

       This is a patent infringement action brought pursuant to 28 U.S.C. §
1498(a) (2012) against the United States for unlicensed use of plaintiff’s
patent. A third party, Gemalto, Inc., responded to our rule 14(b)(3) notice to
third parties, and joined the case as a third-party defendant. Defendants
moved for summary judgment, contending that certain claims of the patent are
indefinite and thus invalid under 35 U.S.C. § 112. Oral argument was held on


                                      1
January 14, 2014, and again after supplemental briefing on May 5, 2014. The
motion is fully briefed. For the foregoing reasons, defendants’ motion is
granted in part and denied in part.

                               BACKGROUND

        United States Patent No. 4,985,921 (“‘921 Patent”) is held by plaintiff,
SPA Syspatronic AG, a Swiss company. The patent concerns a “portable
carrying device containing a control unit and an additional data memory . . .
as an integrated circuit.” DX 1 at A3 (the ‘921 Patent).1 The main application
of these devices was intended to be credit cards and other small data-carrying
cards. Id. The main feature of the device is the protection of the data stored
on the device from unauthorized access. This is achieved primarily through
the utilization of multiple microchips communicating with one another using
codes or encryption “without participation of system parts external to the
carrying device.” Id. at A4 (claim 1).

        Following proceedings before the European Patent Office concerning
the corresponding European patent, plaintiff sought reexamination of claim 1
of the ‘921 patent by the United States Patent and Trademark Office (“PTO”).
The result of that process was the cancellation of claim 1 and the addition of
claims 8-13.2 See id. at A5-A7 (Ex Parte Reexamation Certificate, Oct. 8,
2008). Plaintiff instituted this action against the United States in November
of 2010. Plaintiff alleges infringement of claims 2, 3, 4, 7, 8, 9, 10, and 13 by
the United States.

       As a result of the first patent reexamination and the cancellation of
claim 1, claim 8 is the only independent claim. It teaches:

        A portable data carrying device comprising a control unit and an
        additional data memory which are each implemented as
        integrated circuits, wherein the control unit is provided with


1
 The parties attached exhibits in support of their positions for or against
defendants’ motion for summary judgment. “DX” refers to “defendants’
exhibit.” “PX” refers to “plaintiff’s exhibit.”
2
 Gemalto requested a second ex parte reexamination of the ‘921 Patent. This
second reexamination did not result in any changes. See id. at A8-A9 (Ex
Parte Reexamation Certificate, Nov. 20, 2012).

                                       2
        means for placing it in communication with an external
        read/write device characterized in that entry into the additional
        data memory (5) by the control unit (2) is protected by coding
        means which is in the carrying device and is operative to permit
        entry into the additional data memory (5) without participation
        of system parts external to the carrying device, and wherein the
        control unit and the additional data memory are operative to
        exchange information in encrypted form.

Id. at A7.

        Claim 2 adds that the data memory “contains an access code region and
the code means includes means within the control unit (2) for producing a code
signal (C) for entry to the data memory through the access code region.” Id.
at A4 (claim 2). Claim 3 adds that “code means” “includes a processor (8)
associated with the data memory (5) for a secure (coded or decoded) data
exchange with the control unit (2a).” Id. (claim 3). Claim 4 further explains
that the “code means includes means within the control unit (2b) for producing
a secret microcode for communications between the control unit and the data
memory.” Id. (claim 4). Claims 5 and 6 are not at issue in this suit. Claim 7
limits the device to having the control unit, data memory, and other parts of the
microchips “in a totally integrated circuit construction on the same carrier.” Id.
(claim 7). Claim 8 is the new independent claim quoted above. Claim 9 is
largely duplicative of claim 2 but refers to claim 8 rather than the cancelled
claim 1. Claim 10 is likewise similar to claim 4. Claims 11 and 12 are not at
issue. Claim 13 is a slightly reworded version of claim 7: “the control unit, the
additional data memory and further regions are implemented collectively in an
integrated circuit construction on a single carrier.” Id. at A7 (claim 13).

       Paragraph 2 of section 112 of title 35 requires generally that patent
specifications “conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.” 35 U.S.C. § 112 ¶ 2 (2006).3 This is the “definiteness”


3
  35 U.S.C. § 112 was amended in 2011,which changed the wording of
paragraph two slightly. See Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 4(c), 125 Stat. 284, 296 (Sept. 16, 2011). Those amendments did not
take effect until after this action was filed and thus do not affect the patent in
suit. We thus cite to the 2006 code containing the previous version of the
statute.

                                        3
requirement of patents. Paragraph 6 of the same code section allows for a
special type of patent claiming known as “means-plus-function” claiming:

       An element in a claim for a combination may be expressed as a
       means . . . for performing a specified function without recital of
       structure . . . and such claim shall be construed to cover the
       corresponding structure . . . described in the specification and
       equivalents thereof.

Id. ¶ 6. “Means-plus-function” limitations disclose a function in the claim
language, and the structure to achieve that function (or the “means”) must be
disclosed in the patent specifications. See Phillips v. AWH Corp., 415 F.3d
1303, 1311 (Fed. Cir. 2005) (en banc). The ‘921 Patent employs several
“means-plus-function” elements in its claims.

        Defendants have identified three means-plus-function limitations as to
which they assert that the ‘921 Patent’s specifications fail to disclose any
means. They are (1) “coding means which is in the carrying device and is
operative to permit entry into the additional data memory . . . without
participation of system parts external to the carrying device,” which is found
in independent claim 8; (2) “means within the control unit for producing a
code signal for entry to the data memory through the access code region,”
which is found in dependent claims 2 and 9; and “means within the control
unit for producing a secret microcode for communications between the control
unit and the data memory,” which appears in dependent claims 4 and 10. DX
1 at A4. Plaintiff does not dispute that these are means-plus-functions
limitations.

        There are four embodiments of the device contemplated by the patent
as illustrated in Figures 1-4 of the patent’s specifications. They appear below:




                                       4
Id. at A2.

       The prose that follows in the patent specifications describe each of the
embodiments and is comprised of a little over two columns of text. See id. at
A3-A4 (column 2, line 23 through column 4, line 24). The first embodiment
specifications read:

                                      5
In FIG. 1 a plastic card is illustrated as a data carrying device in
which two integrated semi-conductor - circuit components
(“chips”) 2 and 4 are set. The component 2 comprises the
control unit of the data carrying device and is connected to an
external contact 9 of the card 1 for the purpose of connecting to
an external (not illustrated) read/write unit of the data exchange
system. The connections for the external unit can also be
produced in other manners than the galvanized contact, for
example, by known means with an inductive coupling and so
forth. The control unit 2 preferably comprises a microprocessor
with a computer and RAM - and ROM storage areas as well as
additionally a data memory region. An additional data memory
5 exists on the second component 4. The connection between the
two components 2 and 4 is produced by means of a multiple
conductor strip 3. For technical assembly reasons, it may be
useful to combine the components 2 and 4 with the conductor
strip 3 and if necessary the external contact 9 into a common
module for the construction in the plastic card 1.

        An external connection to the control unit 2 can only be
made by means of the contact 9 so that an exchange of sensitive
data between the card and the system in a known fashion can
only come about after successful authentication and
identification, which functions are participated in by the control
unit. The data exchange is produced also however within the
card between the components 2 and 4 by means of the conductor
strip 3. In order to prevent manipulation and unauthorized
access to the data memory 5, entry to this memory is protected
by the control unit 2. For example according to FIG. 1, an access
code region 6 is associated with the data memory 5 for this
purpose. In this manner the memory is accessible only by means
of a code signal C which is produced by the control unit 2, that
is, data exchange D between the components 2 and 4 is only
possible after successful decoding of the code region 6. Also,
the data exchange within the component 2 between the control
unit and a data memory existing there is produced in a similarly
protected manner, although not further illustrated. Such
protected data exchange processes are produced within the data
carrying device 1 with a certain degree of self-sufficiency
without participation of external system parts (naturally apart
from the current supplied over the contacts 9). The access in

                                 6
       particular to the sensitive data in the data memory 5 is thereby
       protected by means of a barrier which can only be overcome by
       means of key codes (key lock) employed within the card. In this
       manner the security can substantially be enhanced so that in the
       microprocessor of the control unit 2 new access codes can
       always be generated, for example after each successful access to
       the additional data memory. . . . The implementation of the
       additional memory 5 is possible as a serial memory with
       comparative logic and with a minimum number of connecting
       conductors 3 between the components 2 and 4.

DX 1 at A3-A4.

       The second embodiment of the device is explained in this way:

                In the embodiment according to FIG. 2, the general
       construction of the data carrying card 1 with the integrated
       circuit components 2a, 4a interconnected by means of the
       conductor strip 3 is the same as in FIG. 1. The control unit 2a
       connected with the external contacts 9 similarly comprises a
       microprocessor and a data memory region. On the other hand,
       the component 4a contains besides the additional memory 5
       likewise a microprocessor 8 Whereby still further possibilities
       with respect to applications and security are achieved. With the
       help of a microprocessor 8 it is possible not only to secure entry
       to the data memory 5 from the control unit 2 as in FIG. 1 and
       with it the unauthorized reading of data from the memory 5, but
       also beyond this to secure the entire data exchange over the
       conductors 3, that is, to accomplish this in coded or decoded
       form. However, the double-pass entry system is only possible
       after a successful cryptographic authentication from the opposite
       pas which again is only produced, "within the card", that is,
       without participation of external system parts.

Id. at A4.

       The third embodiment of the device is described in this way:

               The general construction in the example according to
       FIG. 3 with a control unit 2b and an additional data memory 4b
       in the form of separate integrated circuits corresponds again to

                                       7
       the foregoing examples. A protected entry to the additional data
       memory 5 is realized in this embodiment again in another
       manner, namely in that the microcode of the control unit 2b,
       designated 10, is secret. Of course, a well known
       microprocessor can be employed in the control unit 2b and this
       microprocessor can be based upon an “uncommon” microcode
       10 only known to the manufacturer and therefore secret. In this
       manner an unauthorized access to the data stored in the data
       carrier or correspondingly a decoding of the information
       exchanged over the conductors 3 is rendered impossible, even
       if there was success in getting through the multiple conductor
       strip 3.

Id.

        The fourth embodiment differs in form from the other three in that the
microchips in the card are all part of one assembly, a single circuit. It is
described as containing “one individual semi-conductor component . . . on
which the control unit . . . , the additional data memory . . . as well as further
circuit regions are in total implemented in an integrated circuit configuration.”
Id. The specification continues:

       In a manner similar to the example according to FIG. 3, the
       microcode l0a in the microprocessor of the control unit 2c is
       secret so that entry to the additional data memory 5 is again
       protected (“mechanical” access on the conductors between the
       regions of the integrated circuit on one and the same carrier
       would naturally however be considerably more difficult than on
       the conductors 3 Which are laid within the plastic card 1 or
       correspondingly Within a module Which consists of the two
       separate components 2 and 4).

              With the computer in the microprocessor of the control
       unit 2c there exists further an additional computer 14 in
       combination With registers 15 which are likewise positioned on
       the carrier 12. As indicated the registers 15 are likewise
       coordinated With the secret microcodes l0a of the control unit
       2c, that is, the signal exchange between the control unit 2c and
       the additional computer 14 is produced likewise on the basis of
       the secret codes. One such additional calculator 14 makes
       possible the execution of especially highly developed

                                        8
       cryptographic methods within the portable data carrying device,
       that is, without requiring external calculating capacity and
       thereby particular data exchanges with external system parts.
       This means that the application of the secret microcodes l0a
       remains restricted to the integrated circuits of the single carrier
       12 in the data carrying device whereby high level security
       against manipulation and unauthorized access is achieved.

Id.

       The parties have exchanged competing proposed constructions of the
claim terms cited above, but have not yet presented them to the court for
resolution at a claim construction hearing. Instead, defendants moved for
summary judgment, asking the court to hold that, as a matter of law, certain of
the patent’s means-plus-function claims are indefinite, making the patent
invalid. The basis of the motion, as will be more fully explained below, is that
the patent specifications lack sufficient structure corresponding to the
functions claimed in those means-plus-function claims. Without that
corresponding structure in the specifications, those claims are, according to
defendants, indefinite.

                             DISCUSSION

       Within the above quoted specifications must reside the structure that
performs the functions listed in the means-plus-function limitations of the
claims. The court must be able to “determine the claimed function” and
“identify the corresponding structure in the written description of the patent
that performs that function.” Applied Med. Res. Corp. v. U.S. Surgical Corp.,
448 F.3d 1324, 1332 (Fed. Cir. 2006). As the Federal Circuit has explained,

       the structure disclosed in the specification is ‘corresponding’
       structure only if the specification or prosecution history clearly
       links or associates that structure to the function recited in the
       claim. This duty to link or associate structure to function is the
       quid pro quo for the convenience of employing [means-plus-
       function claiming].

Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B.
Braun Med., Inc. v. Abbot Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). If
that structure is missing or not sufficiently linked to the function, those claims
invoking that function are indefinite. The Supreme Court recently explained

                                        9
that patent claims must, “viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of the invention with
reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2124 (2014).4 This “mandates clarity, while recognizing that absolute
precision is unattainable.” Id.

         When, as here, the claim employs a computer or microprocessor to
accomplish the function, the structure disclosed must be more than just a
reference to the microprocessor or computer generally. See WMS Gaming Inc.
v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Likewise, “simply
disclosing software . . . without providing some detail about the means to
accomplish the function is not enough.” Noah Sys. Inc. v. Intuit Inc., 675 F.3d
1302, 1312 (Fed. Cir. 2012) (citing Finisar Corp. v. DirecTV Grp., Inc., 523
F.3d 1323, 1340-41 (Fed. Cir. 2008)). What must be disclosed then is a
specific algorithm for accomplishing the function. See, e.g., Ergo Licensing,
LLC v. CareFusion 303, Inc., 673 F.3d 1361,1364-65 (Fed. Cir. 2012). That
is to say the specifications must disclose “a series of instructions for the
computer to follow,” i.e, “a step by step procedure for accomplishing a given
result.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,1384-85 (Fed.
Cir. 2011) (internal citations omitted). The law does not require disclosure of
the actual coding, however. The algorithm can take the form of “any
understandable terms including as a mathematical formula, in prose . . . or as
a flow chart, or in any other manner that provides sufficient structure.” Finisar
Corp., 523 F.3d at 1340 (internal citations omitted). It is important to remain
conscious of the distinction between whether a structure is disclosed and
whether it is adequate. In this case, because a microprocessor is employed, the
first question is whether an algorithm is disclosed at all. If one is disclosed,
then the court must be satisfied that it is sufficient.

       Definiteness, is a question of law, Eplus, Inc. v. Lawson Software, Inc.,
700 F.3d 509, 517 (Fed. Cir. 2012), and can be properly resolved on summary
judgment, see, e.g., Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d
1376 (Fed. Cir. 2013) (affirming district court’s grant of summary judgment
for defendant on the issue of indefiniteness). Although an issue of law, the
court is often aided by the testimony of persons of ordinary skill in the art.


4
  The Court went on to explain that “[i]t cannot be sufficient that a court can
ascribe some meaning to a patent’s claims; the definiteness inquiry trains on
the understanding of a skilled artisan at the time of the patent application, not
that of a court viewing matters post hoc.” Nautilus, 134 S. Ct. at 2130.

                                       10
See, e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003). The
Federal Circuit has described a test for the adequacy of a disclosed structure
as whether “a person of ordinary skill in the art would be []able to recognize
the structure in the specification and associate it with the corresponding
function in the claim.” Noah Sys., 675 F.3d at 1312. The disclosed structure
cannot be too general, however. The patentee may not claim every possible
means of accomplishing the claimed function. That is in essence a restatement
of the function and is known as “purely functional claiming.” See Noah Sys.,
675 F.3d at 1318-19.

        It is defendant’s burden to prove that “the specification fails to disclose
sufficient corresponding structure” by clear and convincing evidence. TecSec,
Inc. v. IBM Corp., 731 F.3d 1336, 1349 (Fed. Cir. 2013). We grant summary
judgment only when the “movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law.”
Rule 56 of the Rules of the United States Court of Federal Claims (“RCFC”).
We will draw all justifiable factual inferences in favor of the non-movant.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

        Defendants argue that the ‘921 patent fails to disclose a structure for the
means-plus-function limitations identified.5 Defendants believe that nowhere
in the specifications is found a step-by-step set of instructions for claim 8’s
“coding means” limitation, the “access code” limitation of claims 2 and 9, or
the “secret microcode” limitation of claims 4 and 10. Instead, the government
and Gemalto argue that the language of the specifications is nothing more than
a restatement of the function, an example of the prohibited “purely functional
claiming.” Noah Sys., 675 F.3d at 1318-19. Plaintiff answers that the
requirements of 35 U.S.C. § 112 are “not a high bar” and that all it must do is
show “some structure corresponding to the means in the specification, as the
statute states, so that one can readily ascertain what the claim means and
comply with the particularity requirements of [§ 112], ¶ 2.” Pl.’s Opp’n to
Defs.’ Mot. for Summ. J. 14 (quoting Biomedino, LLC v. Waters Techs. Corp.,
490 F.3d 946, 950 (Fed. Cir. 2007)). Plaintiff provides the court with citation
to various lines in the specifications that it believes constitute an algorithm and
testimony from its expert to buttress its position. We turn now to the specifics
of the claims.


5
  Defendants state in their reply brief that, even were the court to find an
algorithm, the specifications are inadequate as overly general. This is not,
however, the thrust of their motion or their reply in support.

                                        11
I. The Coding Means Limitation

       Claim 8 teaches a “portable data carrying device” comprised of a
“control unit” and “data memory.” DX 1 at A7. The coding means limitation
adds that access to the data memory by the control unit is protected by a
“coding means which is in the carrying device and is operative to permit entry
into the additional data memory . . . without participation of system parts
external to the carrying device.” Id. It is that protection that comprises the
coding means. Plaintiff identifies what it believes are three structures, or
algorithms, in the specifications, each corresponding to the first three
embodiments as shown in the patent figures above. It needs only one
embodiment to disclose a sufficiently linked structure in order for claim 8 to
be valid. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1113-14 (Fed. Cir. 2002).

       A. The First Embodiment

       For the first embodiment, corresponding to figure 1, plaintiff offers the
following structure and algorithm:

       A control unit or microprocessor [2] programmed with
       instructions to perform the algorithm of (a) producing an access
       code signal [C], and (b) sending the access code signal [C] to the
       access code region [6], which (c) allows access to the additional
       data memory [5] upon successful decoding of information in the
       access code signal [C].

Pl’s Opp’n 20.6 This is not a quotation from the ‘921 patent specifications
themselves but is plaintiff’s summary of portions of the specification relating
to the first embodiment.

        In its brief and at oral argument, plaintiff presented a paragraph from
the specifications heavily edited with sections italicized and bolded (in its
brief) or underlined and highlighted (at oral argument). From those it draws


6
 Defendants point out in their briefing that plaintiff’s identification of the ‘921
patent’s structure has not been consistent throughout the history of litigation
regarding this patent in this case and in district court. We will consider the
specific structures offered by plaintiff in its briefing on the motion before us.


                                        12
the needed algorithm.

       This language is as follows:

       In order to prevent manipulation and unauthorized access to the
       data memory 5, entry to this memory is protected by the control
       unit 2. For example according to FIG. 1, an access code region
       6 is associated with the data memory 5 for this purpose. In this
       manner the memory is accessible only by means of a code signal
       C which is produced by the control unit 2, that is, data exchange
       D between the components 2 and 4 is only possible after
       successful decoding of the code region 6. . . . Such protected
       data exchange processes are produced within the data carrying
       device 1 with a certain degree of self-sufficiency without
       participation of external system parts . . . . The access in
       particular to the sensitive data in the data memory 5 is thereby
       protected by means of a barrier which can only be overcome by
       means of key codes (key lock) employed with the card. . . . in
       the microprocessor each of the control unit 2 new access codes
       can always be generated, for example after each successful
       access to the additional data memory. [(memories)].

Pl.’s Opp’n 22 (quoting DX 1 at A3-A4) (omitted language is that which was
not bolded or italicized as it appears in plaintiff’s brief). In sum, these
specifications instruct that the control unit protects the device’s memory by
making it “accessible only by means of a code signal” produced by the control
unit. It then states that data exchange between the control unit and the memory
is “possible after successful decoding of the code region.” The quoted
language then repeats the security feature of the access code permitting the
only access to the device’s memory and states that “new access codes can
always be generated, for example after each successful access” to the memory.

       Defendants argue that this language does not explain how the code
region will be decoded or what constitutes the code signal, i.e., what sort of
code it is, by what means it is produced, and whether it is encrypted. This,
defendants argue, is tantamount to claiming every possible type of code
produced by any type of software or hardware and every possible method of
decoding the code by the access code region, which they argue is prohibited
pure-functional claiming.

       The specification states that access to the memory is protected by the

                                      13
control unit and an access code region associated with the data memory, that
a “code signal” will be produced by the control unit, and that data exchange
between the control unit and the memory is possible only after the code region
is decoded. The corresponding drawing, figure 1, indicates a code signal being
transmitted between the control unit and the memory by employing a one-way
arrow and shows a two-way arrow corresponding to the data exchange
between the control unit and the data memory. We agree with plaintiff that a
fair reading of the quoted specification and the drawing is that the control unit
(a microprocessor) is “programmed with instructions to . . . produc[e] an
access code signal” and send it “to the access code region, which . . . allows
access to the additional data memory” if the code is correct. Pl.’s Opp’n 20.

        Defendants’ point that the specification discloses no particulars as to
what form the code signal should take or how the access code region will
decode itself are inapposite to the general argument on which they rely. Those
points might be well taken if we were considering whether the disclosed
structure was adequate. Instead, we have been asked to decide whether the
patent discloses a structure at all, in this context an algorithm, corresponding
to the function in claim 8.7 That is a different and more limited inquiry. We
think it plainly does. Whether it is adequate is a question we leave for another
day.

       B. The Second Embodiment

       The second embodiment, corresponding to figure 2, is laid out in the
following language in the specifications:

              In the embodiment according to FIG. 2, the general
       construction of the data carrying card 1 with the integrated
       circuit components 2a, 4a interconnected by means of the
       conductor strip 3 is the same as in FIG. 1. The control unit 2a
       connected with the external contacts 9 similarly comprises a
       microprocessor and a data memory region. On the other hand,


7
  It is important to remember what the function claimed by the coding means
limitation of claim 8 is. It claims a means for securing data access without
participation of parts external to the device. The use of an access code is a
particular structure disclosed in the specifications to accomplish that function.
Although brief and devoid of detail, the first embodiment is thus not merely
a restatement of the function.

                                       14
       the component 4a contains besides the additional memory 5
       likewise a microprocessor 8 [w]hereby still further possibilities
       with respect to applications and security are achieved. With the
       help of a microprocessor 8 it is possible not only to secure entry
       to the data memory 5 from the control unit 2 as in FIG. 1 and
       with it the unauthorized reading of data from the memory 5, but
       also beyond this to secure the entire data exchange over the
       conductors 3, that is, to accomplish this in coded or decoded
       form. However, the double-pass entry system is only possible
       after a successful cryptographic authentication from the opposite
       pas[s] which again is only produced, “within the card”, that is,
       without participation of external system parts.

DX 1 at A4. This passage adopts by reference the structure of the first
embodiment and adds a microprocessor to the memory chip. The feature
added by the second embodiment is the “securing [of] the data exchange over
the conductors,” presumably by some form of encryption, though the language
states it might be in “decoded form,” or the use of “cryptographic
authentication” and a “double-pass entry system.” Id. The figure 2 drawing
is similar to the first but the memory chip now includes a section (8) that
represents the microprocessor added in this embodiment. The exchange of
data between the two chips is represented by a bidirectional arrow.

       Plaintiff finds in the above quoted language the following set of
instructions:

       The second microprocessor 8 is programmed to perform the
       algorithm of (a) encrypting (or encoding) data from the
       additional data memory 5 and (b) sending the encrypted (or
       encoded) data to the first control unit or microprocessor 2a. The
       microprocessor 2a is programmed to perform the algorithm of
       (c) receiving the data from the second microprocessor 8 and
       (d) decrypting (or decoding) data received.

Pl.’s Opp’n 27.

        Defendants again argue that all this amounts to is a restatement of the
claimed function–securing access to the data memory without parts external
to the device–not the means for accomplishing it. They assert again that the
second embodiment is devoid of any specifics, other than mention of a
“double-pass entry system” or “cryptographic authentication,” about the

                                      15
encryption methods to be employed. This, they believe, is evidence of a
specification empty of structure and therefore indefinite.

       In response to defendans’ argument that the specifications are fatally
devoid of structure, plaintiff offered the testimony of its expert, Dr. Steward,
to provide two ways in which the second embodiment might achieve its
function:

       In a first manner of operation, data between the control unit and
       the additional data memory is exchanged in encrypted or
       encoded form. In this first manner of operation, one of ordinary
       skill in the art would understand that a first control unit or
       microprocessor is programmed with instructions to encrypt
       and/or decrypt (or encode and/or decode) data, and a second
       microprocessor is programmed with instructions to encrypt
       and/or decrypt (or encode and/or decode) that data.

       In a second manner of operation, the control unit can operate in
       a manner similar to the Figure 1 embodiment described above
       and be used to produce an access code. With this second manner
       of operation, one of ordinary skill in the art would understand
       that the control unit or first microprocessor is programmed with
       instructions to produce an access code, and the second
       microprocessor operates as the access code region.

PX E ¶¶ 55, 58. As to defendants’ argument that the disclosure of encryption
without any specifics is insufficient, Dr. Stewart opined that

       [o]ne of ordinary skill in the art would appreciate that many
       different known types of encryption or encoding algorithms
       could be used in accordance with the ‘921 Patent for secure data
       exchange between the controller and the additional memory.
       Many encryption or encoding algorithms were well known and
       used as of 1988, including DES encryption, RSA encryption,
       and Diffie-Hellman encryption.

Id. ¶ 57. This testimony, plaintiff argues, is enough to meet the Federal
Circuit’s test of whether a person of ordinary skill in the art could recognize
the claimed structure and associate it with the claimed function.

       As to the limited question of whether the second embodiment discloses

                                      16
any structure at all, here an algorithm, we answer in the affirmative. In light
of the incorporation of the first embodiment, and some confusing surplusage
aside, it is clear that the second embodiment adds a microprocessor to the data
memory, which is programmed to encrypt the data exchanged between the
control unit and the memory. This is not, as defendants urge, the claiming of
all possible ways to secure such a data exchange. It might be overly broad or
insufficiently detailed, and Dr. Stewart’s opinion might be countervailed by
other testimony offered by defendants as to why it is insufficient, but we reject
the notion that it is a mere restatement of the claimed function and the
associated argument that it is not an algorithm at all. The adequacy of the
disclosed algorithm will be judged after a hearing on the issue.

       C. The Third Embodiment

       The third structure offered by plaintiff, corresponding to figure 3,
“includes a control unit or microprocessor 2b that is programmed to perform
the algorithm of (a) retrieving data from the additional data memory 5 and (b)
the decrypting or decoding the data received using a secret microcode 10 (i.e.,
secret or uncommon instructions or codes).” Pl.’s Opp’n 33. The
corresponding language cited by plaintiff from the specification is as follows:

               The general construction in the example according to
       FIG. 3 with a control unit 2b and an additional data memory 4b
       in the form of separate integrated circuits corresponds again to
       the foregoing examples. A protected entry to the additional data
       memory 5 is realized in this embodiment again in another
       manner, namely in that the microcode of the control unit 2b,
       designated 10, is secret. Of course, a well known
       microprocessor can be employed in the control unit 2b and this
       microprocessor can be based upon an “uncommon” microcode
       10 only known to the manufacturer and therefore secret. In this
       manner an unauthorized access to the data stored in the data
       carrier or correspondingly a decoding of the information
       exchanged over the conductors 3 is rendered impossible, even
       if there was success in getting through the multiple conductor
       strip 3. . . .

       In a manner similar to the example according to FIG. 3, the
       microcode 10a in the microprocessor of the control unit 2c is
       secret so that entry to the additional data memory 5 is again
       protected . . . .

                                       17
DX 1 at A4. The element added by embodiment three is the use of a secret
microcode. The components of the device in figure 3 are arrayed, as in the
first two embodiments, with a control unit and a separate data memory chip,
which in the second and third embodiments also includes a microprocessor.
Access to the memory is protected in this embodiment by use of a secret
microcode, a code “only known to the manufacturer.” This, according to the
specification, renders “decoding of the information exchanged over the
conductors” impossible.

       The details of how the device employs the secret microcode are not
disclosed other than the statement that, without the microcode, “a decoding of
the information exchanged over the conductors . . . is rendered impossible.”
Whether the microcode is used like an access code or whether it is used like
a cipher to encrypt and decrypt the data exchange, as plaintiff posits, is also
not specifically disclosed. The specification hints at both: “in this manner an
unauthorized access to the data stored in the [memory] or corresponding a
decoding of the information exchanged over the conductor 3 is rendered
impossible.” Id.

        Defendants argue that this embodiment is wholly devoid of instructions
that the microchips will be programmed to follow and thus is not a structure.
We agree to this extent: it is not distinct enough from the previous
embodiments to be considered an algorithm of its own.

       Although arrayed in a similar way to the first two embodiments and
employing the same physical makeup as the second–two microprocessors, one
in the control unit and one in the data memory–the third embodiment’s
specifications add too little to the previous embodiments to stand on their own.
These specifications instruct that the data is protected in this embodiment “in
another manner, namely in that the microcode of the control unit . . . is secret”
and thus “unauthorized access to the data stored in the data carrier or
correspondingly a decoding of the information exchanged over the conductors
3 is rendered impossible.” Id. Figure 3 adds nothing to the written
specifications, showing only the two chips and item 10, which is simply the
existence of a secret microcode in the control unit. Whether the data is meant
to be protected by a secret access code or, as plaintiff’s argues, by an
encryption employing a secret cipher, the disclosure of the fact that the device
employs an uncommon code, one that is secret, is not an algorithm. It does not
change any of the steps in the instructions for retrieving data from the data
memory. Simply adding the word “secret” to the structure does not make it
different structure. We view the third embodiment merely as a restatement of

                                       18
the first two with the word “secret” added.

       Unlike the first and second embodiments, in which at least a minimal
set of instructions was disclosed, the third embodiment raises only
possibilities. It adds to the first two the use of a secret code but does not
disclose any set of steps or instructions for the device to follow. That is
insufficient.

        Even if we viewed the addition of a “secret microcode” as adding
something meaningful to the third embodiment, it would still be insufficient
to constitute an algorithm. In Triton Tech of Texas, LLC v. Nintendo of
America, Inc., No. 2013-1476, 2014 WL 2619546 (Fed. Cir. June 13, 2014),
the Federal Circuit recently held, in rejecting a means-plus-function claim, that
“merely using the term ‘numerical integration’ does not disclose an algorithm
. . . but is instead an entire class of different possible algorithms used to
perform integration.” Id. at *3. Thus the claim at issue did not “limit the
scope of the claim to the ‘corresponding structure, material, or acts’ that
perform the function, as required by section 112.” Id. The same is true of the
purported algorithm offered by plaintiff for the third embodiment.

       D. The Fourth Embodiment

        The fourth and final offered structure, corresponding to figure 4,
“includes a single integrated circuit 12 with a control unit or microprocessor
2c programmed to perform the algorithm of (a) retrieving data from the
additional data memory 5 and (b) decrypting or decoding the data received
from the additional data memory 5 using a secret microcode 10a.” Pl.’s Opp’n
36. The following is the corresponding language from the specification:

               In contrast to the above described embodiments, the data
       carrying device or correspondingly the plastic card 1 according
       to FIG. 4 contains one individual semi-conductor component 12,
       on which the control unit 2c, the additional data memory 5 as
       well as further circuit regions are in total implemented in an
       integrated circuit configuration. In a manner similar to the
       example according to FIG. 3, the microcode 10a in the
       microprocessor of the control unit 2c is secret so that entry to
       the additional data memory 5 is again protected (“mechanical”
       access on the conductors between the regions of the integrated
       circuit on one and the same carrier would naturally however be
       considerably more difficult than on the conductors 3 [w]hich are

                                       19
       laid within the plastic card 1 or correspondingly [w]ithin a
       module [w]hich consists of the two separate components 2 and
       4).

               With the computer in the microprocessor of the control
       unit 2c there exists further an additional computer 14 in
       combination [w]ith registers 15 which are likewise positioned
       on the carrier 12. As indicated the registers 15 are likewise
       coordinated [w]ith the secret microcodes 10a of the control unit
       2c, that is, the signal exchange between the control unit 2c and
       the additional computer 14 is produced likewise on the basis of
       the secret codes. One such additional calculator 14 makes
       possible the execution of especially highly developed
       cryptographic methods within the portable data carrying device,
       that is, without requiring external calculating capacity and
       thereby particular data exchanges with external system parts.
       This means that the application of the secret microcodes 10a
       remains restricted to the integrated circuits of the single carrier
       12 in the data carrying device whereby high level security
       against manipulation and unauthorized access is achieved.

DX 1 at A4.

        In its initial response and opposition to defendants’ motion, plaintiff
claimed the fourth embodiment as a separate algorithm meeting the
definiteness requirement. Later in the briefing, in response to specific
questions posed by the court for supplemental briefing, plaintiff disclaimed the
fourth embodiment as a separate algorithm and included it as a further example
of the algorithm it propounded for the third embodiment.

       The difference in the fourth embodiment is that all of the chips are
arrayed as one single circuit, which, according to the specifications, provides
additional security. The novelty of this embodiment is not the programming
of the processors but rather their integration into one circuit, i.e., the data
exchange is further secured by the physical location of the several processors
in one circuit. It is thus not a separate algorithm that could meet the
definiteness requirement for claim 8 and plaintiff has correctly disclaimed it
as such.

II. The Dependent Claims: The Access Code Limitation and The Secret
Microcode Limitation

                                       20
       Also at issue are two limitations found in four dependent claims.
Dependant claims 2 and 9 limit the “coding means” of claim 8 by adding the
following: “the code means includes means within the control unit (2) for
producing a code signal (C) for entry to the data memory through the access
code region.” DX 1 at A4. Claim 9 is substantially similar: “coding means
includes means within the control unit for producing a code signal for entry to
the data memory through the access code region.” Id. at A7. Dependent
claims 4 and 10 limit the “coding means” of claim 8 through the additional
language teaching that the “coding means” includes “means within the control
unit (2b) for producing a secret microcode for communications between the
control unit and the data memory.” DX 1 at A4 (claim 4) (claim 10 uses
almost identical language).

        Defendants argue that, irrespective of whether there is any structure
disclosed in the specifications for independent claim 8, no additional structure
corresponding to these dependent means-plus-function limitations is disclosed.
Defendants’ point is that nowhere in the specification are steps or instructions
disclosed for the microprocessor to follow in choosing, producing, or sending
an access code signal. Thus the language offered by plaintiff is nothing more
than a restatement of the function, not an algorithm for achieving the claimed
function, argue defendants. Likewise, for the secret microcode limitation,
defendants argue that nothing in the patent specifications discloses how the
microcode will be used for encrypting or decrypting the data stored in the
memory as is claimed in claims 4 and 9. Put another way, although claim 8
may disclose an algorithm for the general operation of the device, no separate
instructions are disclosed for the “access code” limitation or “secret
microcode” limitation.

       A. The Access Code Limitation

        For the access code limitation, plaintiff responds that the algorithm,
limited to the first two embodiments, is “(a) producing an access code signal,
and (b) sending the access code signal to the access code region, which allows
access to the additional data memory upon successful decoding of information
in the access code signal.” Pl.’s Opp’n 38. Plaintiff argues that this is more
than a restatement of the function because it includes the steps of sending the
code to the access code region and the decoding of the code by the access code
region.

      There is no dispute that the function of the access code limitation is the
production of an access code by the control unit, which will be used by the

                                      21
data memory to grant access to it. The programming of the device includes the
use of a pass code, produced by the control unit, and then sent to and read by
the memory chip to grant access to the data in the memory chip. The problem
for plaintiff is that the function and the offered algorithm amount to the same
thing. Plaintiff is unable to cite to any additional lines in the specification that
answer any of the questions posed by defendants in their motion for summary
judgment: how will the device choose, produce, or send the access code. The
patent simply does not disclose any information other than the fact that an
access code will be produced and used, which is the function claimed by the
access code limitation. The structure provided in the specifications for a
means-plus-function limitation cannot be a simple restatement of the function;
this is prohibited as purely functional claiming. See Blackboard Inc. v.
Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). The access code
limitation of claims 2 and 9 is indefinite because the patent specifications do
not disclose an algorithm for achieving the claimed function of the access code
limitation.

       B. The Secret Microcode Limitation

       For the secret microcode limitation, plaintiff contends that the following
algorithm is present in the specifications for the third and fourth embodiments:
“(a) retrieving data from the additional data memory and (b) decrypting (or
decoding) data received from the additional data memory with or using a
secret microcode.” Pl.’s Opp’n 39. Plaintiff argues that this is something
more than a restatement of the function of producing a secret microcode
because it includes the steps of retrieving the data from the memory and then
decoding or decrypting it using the code.

       The function of the limitation is producing a secret microcode to be
used for the exchange of data between the control unit and the memory chip.
As we noted in our analysis regarding the third embodiment, the patent does
not disclose how the microcode will be used; it hints at the use of a pass code
or cipher for decryption.8 As quoted above, plaintiff’s proposed algorithm


8
  “[A] well known microprocessor can be employed in the control unit [] and
. . . can be based on an ‘uncommon’ microcode [] only known to the
manufacturer . . . . In this manner an unauthorized access to the data stored in
the data carrier or correspondingly a decoding of the information exchange
over the conductors [] is rendered impossible . . . .” DX 1 at A4 (quote from
specifications for the third embodiment).

                                        22
would clear that ambiguity by offering that the secret microcode is used for
decrypting data received from the memory chip. Plaintiff’s algorithim also
adds to the limitation the steps of retrieving the data from the memory and then
decoding or decrypting it.

        Setting aside the question of whether the specifications offer even that
minimal level of clarity,9 beyond producing a secret microcode that will
protect from unauthorized access to the memory or unauthorized decryption
of it, nothing further is disclosed by the specifications. The secret microcode
limitation claims a means for producing and utilizing a secret microcode. The
specifications add nothing other than that such a code will be produced and
utilized by the device for preventing unauthorized access or decryption. This
is merely a restatement of the function and thus cannot constitute the needed
structure. Each function of a claimed means must have a corresponding
structure, here an algorithm, in the specifications.10 See Noah Sys., 675 F.3d
at 1313-14 (The court found that the limitation in question contained two
functions and that the cited specifications did not address the second function.
Thus, the limitation was held to be indefinite.). Because no structure is
disclosed, the secret microcode limitation is indefinite.

       C. The Katz Exception Does Not Apply

       For the first time, in its supplemental brief, plaintiff argues that the
access code and secret microcode limitations do not require separate
algorithms because the functions associated with these limitations are
inherently performed by a computer processor or microprocessor. Plaintiff
relies on the Federal Circuit’s decision in In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). We do
not think Katz controls the outcome here.




9
  Were we to agree with plaintiff that its algorithm was sufficient, we would
still be faced with the question of whether it was actually disclosed in the
specifications. We take no position on that question.
10
  Plaintiff also makes the novel claim in its supplemental brief that neither the
access code nor the secret microcode limitations require separate algorithms
because they “serve to limit the structures and algorithms for the coding means
of the independent claims.” Pl.’s Supp. Br. 6. Plaintiff does not cite any
authority for that proposition, and we are unable to find any.

                                       23
        In Katz, the Federal Circuit reversed the district court’s holding that the
patent in suit was devoid of an algorithm for general computer functions such
as “processing, receiving and storing” data. Id. (internal quotations omitted).
The court held that the patentee was only claiming the general purpose
functions of a computer and thus no disclosure of an algorithm was required.
The disclosure of a computer processor itself was sufficient structure. Id. A
specific algorithm for a processor to achieve the claimed function is thus only
required when the claim involves “specific functions that would need to be
implemented by programming a general purpose computer to convert it into
a special purpose computer capable of performing those specified functions.”
Id. (citing Aristocrat Techs. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1333-34 (Fed. Cir. 2008).

        The function of producing an access code by one chip and then the
utilization of it by another chip to grant access to its stored data goes beyond
storing or retrieving data. It is the securing of data from unauthorized access
that is claimed in this case. The patentee clearly intends for the chips to be
used in a specific way for a special function, unlike in Katz.

        Likewise, the production and use of a secret microcode to limit access
or for decryption goes beyond a general purpose function of a processor. The
use of the term “secret” is enough to distinguish from the generic use of a
processor. The secret microcode limitation requires an algorithm for achieving
that function. Katz does not save claims 2, 4, 9, and 10 from the definiteness
requirement of 35 U.S.C. § 112 paragraph 2.

                                CONCLUSION

        We find that an algorithm for the coding means limitation of claim 8 is
disclosed in the first and second embodiments of the specifications. Whether
these algorithms are sufficient to meet the definiteness requirement will be
addressed after the court has heard testimony from persons of ordinary skill in
the art. The third and fourth embodiments do not present an algorithm for
carrying out the coding means limitation of claim 8. We also find that no
algorithm is disclosed for the access code and secret microcode limitations of
claims 2, 4, 9, and 10 because the specifications merely recite the claimed
function. Those claims are therefore indefinite. Accordingly, defendants’
motion for summary judgment is granted in part and denied in part. The court
will convene a status conference to discuss further proceedings.




                                        24
      s/ Eric G. Bruggink
     ERIC G. BRUGGINK
     Judge




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