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Ibormeith Ip, LLC v. Mercedes-Benz Usa

September 5, 2012


The opinion of the court was delivered by: Hon. Faith S. Hochberg, U.S.D.J.



HOCHBERG, District Judge:

This case comes before the Court on Defendants Mercedes-Benz USA, LLC's and Daimler AG's (collectively, "Mercedes") Motion for Summary Judgment of Indefiniteness with respect to certain claims of U.S. Patent No. 6,313,749, titled "Sleepiness Detection for Vehicle Driver or Machine Operator," (the "'749 patent"). The Court has reviewed the submissions of the parties and considered the motion on the papers in accordance with Fed. R. Civ. P. 78. Also pending before the Court are the parties' submissions regarding their disputed proposed construction of several claim terms in the '749 patent.


Plaintiff Ibormeith IP, LLC ("Ibormeith") brings this action for infringement of the '749 patent. The '749 patent was issued to inventors James Anthony Horne and Louise Ann Reyner on November 6, 2001 and subsequently transferred to Ibormeith, a non-practicing entity. Ibormeith asserts that Mercedes's Attention Assist feature infringes claims 1, 5, 8 and 9 of the '749 patent. Claims 5 and 8 depend from claim 1 and therefore contain each claim limitation in that claim. Claims 1 and 9 both contain a "computational means" limitation, which the parties agree is a means-plus-function limitation performed by a computer and governed by 35 U.S.C. § 112 ¶ 6. "As such, the specification of the ['749] patent must contain an algorithm [or algorithms] to perform the function [or functions] associated with the ["computational means"] limitation, or the limitation is indefinite." Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1305 (Fed. Cir. 2012).

A.The '749 Patent

The '749 patent claims a sleepiness monitor for vehicle drivers or machine operators. The monitor functions by "taking account of circadian and sleep parameters of an individual vehicle driver, and/or generic or universal human physiological factors, applicable to a whole class or category of drivers" and integrating that information with "'real-time' behavioural sensing, such as of road condition and driver control action, including steering and acceleration, to provide an (audio-) visual indication of sleepiness." '749 patent col.2 ll.55-62.

The specification teaches that there is a known pattern of human predisposition to sleepiness over a 24-hour period (commonly known as circadian rhythm), where likelihood of falling asleep is greatest during early morning and mid-afternoon hours. Id. at col.2 ll.43-50. According to the specification, the monitor functions by combining time of day predisposition to sleepiness with a number of other factors affecting a driver's likelihood of falling asleep. The specification discloses that some of these factors are specific to the individual driver-such as recent sleep patterns-and are inputted directly by the driver into the monitor system. Other factors, such as steering behavior, light conditions, cabin temperature, road conditions, and trip duration are measured by sensors in the vehicle. The specification teaches that these "inputs being individually weighted, according to contributory importance," are "combined in a computational decision algorithm or model, to provide a warning indication of sleepiness." Id. at col.3 ll.38-42.

The preferred embodiments section of the specification provides the following description of certain aspects of the invention:

An internal memory module may store data from various remote sensors, 13, 15, 27, 29, 31-together with models or algorithms of human body circadian rhythms and weighting factors to be applied to individual sensory inputs.

An internal microprocessor is programmed to perform calculations according to driver and sensory inputs and to provide an appropriate (audio-)visual warning indication of sleepiness through the display screen 18. Id. at col.8 ll.10-17.

Mercedes contends that the two means-plus-function claim limitations in Claims 1 and 9 (set forth in bold) are indefinite, thereby rendering Claims 1 and 9 invalid. Mercedes also asserts that the two italicized claim terms in Claim 1 are indefinite:

1. A sleepiness monitor for a vehicle driver, or machine operator, comprising: a sensor for sensing a driver or operator control input; a memory for storing an operational model that includes a physiological reference model of driver or operator circadian rhythm pattern(s) and a vehicle or machine operating model or algorithm; computational means for weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving from the weighted model, driver or operator sleepiness condition and producing an output determined thereby; and a warning indicator triggered by the computational means output, to provide a warning indicator of driver operator sleepiness. . . .

9. A sleepiness monitor for a driver and vehicle, comprising: a sensor for sensing a steering movement, about a reference position; a memory, for storing a circadian rhythm pattern or time-of-day physiological reference profile of predisposition to sleepiness; and computational means for computing steering transitions and weighing that computation according to time of day, to provide a warning indication of driver sleepiness.

Id. at col.16 ll.13-30, 50-61 (emphasis added).

B.Procedural History

The parties filed claim construction briefs disputing the construction of five claim terms in the '749 patent and the Court held a claim construction hearing on April 25, 2012. In its claim construction briefs and at the hearing, Mercedes argued that the means-plus-function "computational means" limitations in Claims 1 and 9 are indefinite, thereby rendering Claims 1 and 9 invalid. Due to the significance of the "computational means" claim limitations to this action,*fn1 the Court reserved its ruling on claim construction and, with their consent, instructed the parties to brief summary judgment on indefiniteness.


Pursuant to Federal Rule of Civil Procedure 56(c), a motion for summary judgment will be granted if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). In other words, "[s]ummary judgment may be granted only if there exists no genuine issue of material fact that would permit a reasonable jury to find for the nonmoving party." Miller v. Ind. Hosp., 843 F.2d 139, 143 (3d Cir. 1988). All facts and inferences must be construed in the light most favorable to the non-moving party. Peters v. Del. River Port Auth., 16 F.3d 1346, 1349 (3d Cir. 1994). The judge's function is not to weigh the evidence and determine the truth of the matter, but to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. "Consequently, the court must ask whether, on the summary judgment record, reasonable jurors could find facts that demonstrated, by a preponderance of the evidence, that the nonmoving party is entitled to a verdict." In re Paoli R.R. Yard PCB Litig., 916 F.2d 829, 860 (3d Cir. 1990).

The party seeking summary judgment always bears the initial burden of production. Celotex, 477 U.S. at 323. This burden requires the moving party to establish either that there is no genuine issue of material fact and that the moving party must prevail as a matter of law, or to demonstrate that the nonmoving party has not shown the requisite facts relating to an essential element of an issue on which it bears the burden. Id. at 322-23. This burden can be "discharged by 'showing' . . . that there is an absence of evidence to support the nonmoving party's case." Id. at 325. Once the party seeking summary judgment has carried this initial burden, the burden shifts to the nonmoving party.

To avoid summary judgment, the nonmoving party must then demonstrate facts supporting each element for which it bears the burden, thus establishing the existence of a "genuine issue of material fact" justifying trial. Miller, 843 F.2d at 143; accord Celotex, 477 U.S. at 324. The nonmoving party "must do more than simply show that there is some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).

"Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no 'genuine issue for trial.'" Id. at 587 (quoting First Nat'l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 289 (1968)). Further, summary judgment may be granted if the nonmoving party's "evidence is merely colorable or is not significantly probative." Anderson, 477 U.S. at 249-50.


The 35 U.S.C. § 112 ¶ 2 definiteness requirement provides that a patent's claims must "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." Section 112 ¶ 6 allows for means-plus-function claiming where "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Thus, means-plus-function claiming permits a patentee to claim a means for performing a certain function as long as the structure, material, or act is disclosed in the specification. "[T]he scope of the claim limitation [must] be defined by the structure disclosed in the specification plus any equivalents of that structure; in the absence of structure disclosed in the specification to perform those functions, the claim limitation would lack specificity, rendering the claim as a whole invalid for indefiniteness under 35 U.S.C.§ 112 ¶ 2." Aristocrat Techs. Australia PTY Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008) (citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)). "A determination that a patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, paragraph 2, is a legal conclusion." Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1318 (Fed. Cir. 2003) (internal quotation omitted).

The structure corresponding to the function in a means-plus-function claim must be "clearly link[ed] or associate[d] . . . to the function recited in the claim" by the specification or prosecution history. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). Additionally, the corresponding structure disclosed "must be adequate; the patent's specification must provide 'an adequate disclosure showing what is meant by that [claim] language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by [§ 112 ¶ 2].'" Noah Sys., Inc. v. Intuit Inc. 675 F.3d 1302, 1311-12 (Fed. Cir. 2012) (quoting In re Donaldson Co., 16 F.3d at 1195); see also Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) ("If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid that price but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification."). "[A] challenge to a claim containing a means-plus-function limitation as ...

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