In a suit involving two patents for secure internet credit card transaction processing, the U.S. Court of Appeals for the Federal Circuit clarified that in order to anticipate a claimed invention a prior art reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged or combined in the same way as in the claim. Net MoneyIN, Inc. v. VeriSign et al., Case No. 07-1565 (Fed. Cir., Oct. 20, 2008) (Linn, J.).
The plaintiff, Net MoneyIN, founded by inventor and Arizona patent attorney Mark Ogram, brought suit in 2001 against a dozen competitors in the internet credit card processing field. The defendants' key prior art reference was a 1995 working paper entitled "Internet Keyed Payments Protocol" (the iKP reference) that was published by the Internet Engineering Task Force and IBM. The iKP reference provides two example protocols for the flow of a customer's credit card information, payment authorization and transaction approval bridged over both the internet from a merchant's web site and also the existing banking network. Addressing two web security and high-fee hurdles that existed with online transaction systems when Ogram filed the 1996 patent application, the connected a fifth entity to the model: the "payment processor" that acted as an intermediary between the customer, merchant, merchant's bank and card issuing bank.
On summary judgment, the district court found one of the central patent claims invalid as anticipated under § 102(a). On appeal, the plaintiff argued that the district court wrongly combined two of the disclosed examples contained in the single iKP reference in order to find all elements of the claim. The Federal Circuit agreed and clarified that anticipation requires more than all elements of the claim existing in a single prior art reference: "[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102." The Court found that the lack of an identical arrangement of the five entities in the iKP reference foreclosed anticipation. On the other hand, the Court noted that, despite the strict requirements for anticipation, invalidity based on obviousness remains a significant open issue given only the slight differences between the prior art and the claimed invention.
Aside from the anticipation issue, the Federal Circuit also reviewed and upheld the district court's finding that several means-plus-function claims of the patents-in-suit were indefinite under paragraph 6 of § 112 because the claims lacked corresponding structure in the specification. Because the structure requirement is separate from enablement, structure must be provided in the patent specification even if one of ordinary skill in the art could create the invention without the disclosure. Thus, the Court found the recitation of a "bank computer" insufficient structure based on its recent Aristocrat decision because "a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function."
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