In affirming the district court’s summary judgment of invalidity for indefiniteness, the U.S. Court of Appeals for the Federal Circuit held that structures corresponding to a means-plus-function element must be disclosed in the specification; an expert’s testimony concerning what unlisted structures one of ordinary skill would understand are present cannot substitute for this requirement. Default Proof Credit Card System, Inc. v. Home Depot, U.S.A., Inc., Case No. 05-1069 (Fed. Cir. Jun. 16, 2005) (Michel, C.J.).
Default’s patent-in-suit claims a machine allowing customers to purchase prepaid debit cards for use with participating merchants. The system consists of a "point-of-sale assembly" allowing the user to pay for the card, a "means for dispensing" a debit card having a unique identification number and a remote "clearing house assembly" that stores, processes and communicates the card information to the merchant. The claims contain multiple means-plus-function elements. The Federal Circuit noted that the specification is "not a model of clarity" and is limited to "two figures and three columns of text."
Home Depot moved for summary judgment of indefiniteness arguing that the patent fails to disclose any structure corresponding to the "means for dispensing at least one credit card." Default’s expert argued that the specification disclosed three alternative corresponding structures: (1) a kiosk associated with the point-of-sale terminal that sells prepaid cards; (2) a receipt printer attached to the point-of-sale terminal and (3) the display attached to the terminal operated by the merchant; the district court granted summary judgment, and Default appealed.
The Federal Circuit affirmed the district court’s rejection of Default’s arguments, noting that the structure disclosed in the specification must be clearly linked to the claimed function and neither the specification nor the file history clearly linked the means for dispensing with any of the argued structures. The Court noted that Default’s preferred structures appeared to include people, i.e., the merchant operating the display and the kiosk operator, and a human cannot constitute a "means" correspondence to a §112(b) claim element. As explained by the Court, such arguments "merely beg the question of what structure the human being operates to perform the function of distributing the prepaid debit cards."
Finally, the Court found that none of the argued structures was actually described in the specification. Rather, Default’s expert argued that an ordinarily skilled artisan would have understood that such structures would be associated with the point-of-sale terminal. The Federal Circuit instructed that while the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure: "The testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification."
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