Failure to Disclose Structure of Means-Plus-Function Claim Renders Claim Invalid Even if Structure Would be “Trivial” for Skilled Artisan to Create

The court granted in part defendant's motion for summary judgment that plaintiff's post compile optimizer patent was invalid because the term "means for forming a plurality of data storages areas within said memory area" was indefinite. "[O]ne of skill in the art would understand 'forming a data storage area' to mean allocating memory for data storage. . . . Thus, a software algorithm is required, in addition to the C structure definitions, to form the data storage areas. The specification does not disclose . . . an algorithm for forming data storage areas. [Plaintiff] argues that it is trivial for one of skill in the art to form, or allocate, data storage areas. This argument, however, conflates the enablement requirement under § 112 ¶ 1 with the structural disclosure requirement under § 112 ¶ 6. The fact that one of skill in the art could easily form data storage areas based on the C structure definitions does not absolve [plaintiff] of the requirement to disclose structure when employing means-plus-function claiming."

Taylor v. International Business Machines Corporation, 6-10-cv-00615 (TXED July 2, 2012, Order) (Davis, J.).