Noah Systems, Inc. v. Intuit Inc.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

               NOAH SYSTEMS, INC.,
                 Plaintiff-Appellant,
                          v.
                    INTUIT INC.,
                  Defendant-Appellee.
              __________________________

                      2011-1390
              __________________________

   Appeal from the United States District Court for the
Western District of Pennsylvania in Case no. 06-CV-933,
Judge Arthur J. Schwab.
               _________________________

                Decided: April 9, 2012
              _________________________

    ERIC G. SOLLER, Pietragallo Gordon Alfano Bosick &
Raspanti, LLP, of Pittsburgh, Pennsylvania, argued for
plaintiff-appellant. With him on the brief was ALAN G.
TOWNER.

   MICHAEL J. SACKSTEDER, Fenwick & West LLP, of San
Francisco, California, argued for defendant-appellee.
With him on the brief was DAVID D. SCHUMANN.
              __________________________
NOAH SYSTEMS   v. INTUIT INC                               2


Before RADER Chief Judge, O’MALLEY and REYNA, Circuit
                       Judges.
O’MALLEY, Circuit Judge.
    Noah Systems, Inc. (“Noah”) appeals the district
court’s entry of judgment in favor of Intuit Inc. (“Intuit”).
After construing the disputed terms of the asserted claims
of U.S. Patent No. 5,875,435 (“the ’435 patent”), the
district court determined that an “access means” limita-
tion in the claims of the ’435 patent was indefinite, and,
therefore, granted Intuit’s Motion for Summary Judgment
of Invalidity. Because we agree that the “access means”
limitation is indefinite, we affirm the district court’s
judgment.
                        BACKGROUND
    This appeal arises out of an action brought by Noah
against Intuit for infringement of the ’435 patent. The
’435 patent relates to an automated financial accounting
system. The system allows a business or individual to
connect to the computers of companies with which that
entity conducts business so that information regarding
financial transactions can be transmitted between them.
Noah asserts that Intuit’s Quicken and QuickBooks
products infringe system claims 12–17, 29–38, and 40–56.
All of the asserted claims contain an “access means”
limitation. The parties agree that this is a means-plus-
function limitation performed by a processor. As such,
the specification of the ’435 patent must contain an algo-
rithm to perform the function associated with the “access
means” limitation, or the limitation is indefinite. This
appeal turns on whether the specification discloses an
algorithm to perform the function or functions associated
with the “access means” limitation.
3                                NOAH SYSTEMS   v. INTUIT INC


                    I.   The ’435 Patent
     The ’435 patent discloses an accounting system and
methods for using the system. 1 The automated account-
ing system includes a financial accounting computer, a
financial transaction computer, a communications means,
and an access means. ’435 patent col.2 ll.26–41. The
disclosed system “brings together . . . all of the various
entities that are involved with financial transactions
between a first entity, such as an individual or a business,
and other entities, such as merchants, financial institu-
tions and the like.” Id. at col.3 ll.56–64. In the patented
system, the financial accounting computer is associated
with the first entity, whereas the “other entities” possess
the financial transaction computers. Id. at col.3 l.66–col.4
l.10. The financial accounting computer contains a mas-
ter ledger file that is used to receive and record data
transmitted from the financial transaction computers. Id.
at col.3 ll.26–30; col.4 ll.32–35. Each financial transaction
computer, on the other hand, contains a subsidiary ledger
file, which stores information regarding transactions
made between the first entity and that second entity. Id.
at col.4 ll.4–13. Periodically, financial transaction data is
transferred from subsidiary ledger files to the master
ledger file on the financial accounting computer. Id. at
col.6 ll.9–14.
    After the system transfers and incorporates the finan-
cial transaction data into the master ledger, the system
provides authorized agents of the first entity with access
to the master ledger, so they can “enter, delete, review,
adjust and process data inputs” contained within the file.
Id. at col.4 ll.45–61. The specification describes the
“access means” in relation to the flow chart contained in

    1   Noah does not assert that Intuit’s products in-
fringe the patent’s method claims.
NOAH SYSTEMS     v. INTUIT INC                              4


Figure 1. The relevant portion of Figure 1’s flow chart
discloses:




Id. at Fig. 1.
    Describing Figure 1, the specification states, “line 27
leads to box 32 where passcodes are issued to approved
interactive account user(s) and agent(s). . . . This access to
the master ledger . . . allows the agents to perform activi-
ties selected from the group consisting of entering, delet-
ing, reviewing, adjusting and processing data inputs in
the master ledger . . . .” Id. at col.4 ll.47–56. After pass-
codes are issued, “[l]ine 41 then leads to box 44 where the
access to the data inputs in the master ledger is set forth.
5                                 NOAH SYSTEMS   v. INTUIT INC


This access can be provided to interactive users and
agents of the first entity.” Id. at col.6 ll.15–18. At box 44,
the system enables authorized agents to enter “change
order[s], recording instruction adjustments, manual
transactions and the like . . . .” Id. at col.6 ll.18–20. Once
an agent has entered an order, the system, at box 52,
determines whether the entry is valid. Id. at col.6 ll.22–
23. An entry’s validity “is determined by whether the
passcode matches the predesignated list of approved
passcodes and whether the entry is complete in form and
substance.” Id. at col.6 ll.28–30. The system will process
only valid entries. See id. at col.6 ll.22–36.
    Noah alleges that Intuit’s products infringe independ-
ent claims 12, 52, 53, and 56. Representative independ-
ent claim 12 recites:
    A financial accounting system for a first entity
    such as an individual or a business, said system
    comprising:
    a financial accounting computer having at least
    one file;
    a financial transaction computer for receiving
    data inputs, said data inputs including electroni-
    cally recorded financial transactions made be-
    tween said first entity and a second entity;
    first communication means for transferring said
    data inputs from said financial transaction com-
    puter to said file of said financial accounting com-
    puter; and
    means for providing access to said file of said fi-
    nancial accounting computer for said first entity
    and/or agents of said first entity so that said first
    entity and/or said agent can perform one or more
    activities selected from the group consisting of en-
NOAH SYSTEMS   v. INTUIT INC                              6


   tering, deleting, reviewing, adjusting and process-
   ing said data inputs.
Id. at col.12 ll.25–41 (emphasis added). The parties agree
that the emphasized language is the “access means”
limitation. 2
                  II. Procedural History
    Shortly after Noah filed its complaint, Intuit re-
quested an ex parte reexamination of the ’435 patent. The
PTO granted this request, and the litigation was stayed
pending resolution of the reexamination. Ultimately, on
June 9, 2009, the PTO confirmed the patentability of the
original claims of the ’435 patent and determined that
new claims 19–56 were patentable. Joint Appendix
(“J.A.”) 138–42. Upon resolution of the reexamination
proceedings, the district court lifted its stay, re-opened
the case, and permitted Noah to also assert infringement
with respect to its newly allowed claims.
    After the case was re-opened, the parties proceeded
with claim construction briefing. Although the parties
disputed the construction of many terms, only the con-
struction of “access means” is relevant to this appeal. 3
Both parties agreed that this limitation is a means-plus-

   2    Claim 53’s “access means” limitation is worded
slightly differently. Neither party argues that the slight
difference has any effect on the outcome of this appeal.
     3  Intuit argues that, if we disagree with the district
court’s construction of the term “access means” and its
conclusion that such construction invalidates the ’435
patent on indefiniteness grounds, we should otherwise
affirm summary judgment of invalidity on the alternative
ground that a “first communication means” limitation in
the asserted claim is indefinite. Given our conclusions
here, we decline to reach the merits of this argument or to
consider Noah’s contention that Intuit has waived the
right to raise it.
7                                 NOAH SYSTEMS   v. INTUIT INC


function limitation. The parties also agreed that the
function performed by the “access means” is “providing
access to the file of the financial accounting computer for
the first entity and/or agents of the first entity so that the
first entity and/or the agent can perform one or more of
the activities selected from the group consisting of enter-
ing, deleting, reviewing, adjusting and processing the
data inputs.” Report and Recommendation of Special
Master on Claim Construction at 38, Noah Sys., Inc. v.
Intuit Inc., No. 06-CV-933 (W.D. Pa. May 7, 2010), ECF
No. 82 (“Claim Construction R&R”).
    The parties did dispute, however, what structure per-
forms this function. Noah argued that “[t]he structure
includes the financial accounting computer . . . which is
programmed to allow access to files on the computer upon
entry of a passcode.” Noah’s Opening Claim Construction
Br. at 25, Noah Sys., Inc. v. Intuit Inc., No. 06-CV-933
(W.D. Pa. Nov. 13, 2009), ECF No. 73. Intuit, on the other
hand, argued that the structure was indefinite because
the specification disclosed no algorithm by which the
computer was programmed to perform the function as-
serted in the claims. Intuit Inc.’s Opening Claim Con-
struction Br. at 12–16, Noah Sys., Inc. v. Intuit Inc., No.
06-CV-933 (W.D. Pa. Dec. 4, 2009), ECF No. 74. After
conducting a day-long Markman hearing, the court-
appointed special master issued his Claim Construction
R&R. The special master concluded that the “access
means” limitation was indefinite, agreeing with Intuit
that the specification failed to disclose an algorithm by
which the financial accounting computer was pro-
grammed to perform the limitation’s function. Claim
Construction R&R at 42–47.
   Objecting to the Claim Construction R&R, Noah filed
a Motion to Modify the Claim Construction R&R. Intuit
moved the district court to adopt the special master’s
NOAH SYSTEMS   v. INTUIT INC                              8


Claim Construction R&R in all respects but one, which is
not relevant to this appeal. On June 8, 2010, the district
court adopted the Claim Construction R&R in full. Order
Adopting Special Master’s Report and Recommendations
as to Claim Construction, Noah Sys., Inc. v. Intuit Inc.,
No. 06-CV-933 (W.D. Pa. June 8, 2010), ECF No. 89.
With respect to the “access means limitation,” therefore,
the district court found that this limitation functioned to
“provid[e] access to the file of the financial accounting
computer for the first entity and/or agents of the first
entity so that the first entity and/or the agent can perform
one or more of the activities selected from the group
consisting of entering, deleting, reviewing, adjusting and
processing the data inputs.” Id. at ECF No. 89-3. In
addition, the district court concluded that the specifica-
tion failed to disclose an adequate structure for perform-
ing this function, rendering the asserted claims indefinite.
     In response to the district court’s Claim Construction
order, Noah filed a Motion for Reconsideration. In this
motion, Noah argued that neither the special master nor
the district court properly could have concluded that the
“access means” limitation was indefinite without expert
evidence as to how one skilled in the art would have
viewed the specification. The district court referred
Noah’s Motion for Reconsideration to the special master
for consideration.
    After briefing and a hearing, the special master rec-
ommended that the district court deny Noah’s Motion for
Reconsideration. Report and Recommendation of Special
Master on Mot. for Recons. at 2–3, 8, Noah Sys., Inc. v.
Intuit Inc., No. 06-CV-933 (W.D. Pa. July 23, 2010), ECF
No. 98. Reaching this conclusion, the special master
noted that, in cases involving computer-implemented
means-plus-function claims where the specification dis-
closes no algorithm by which the computer or processor is
9                                NOAH SYSTEMS   v. INTUIT INC


programmed, “the burden of establishing indefiniteness
can be met in the first instance by showing the complete
absence” of an algorithm in the specification. Id. at 7–8.
The special master concluded that, in this case, the ’435
patent’s specification “only provide[s] functional descrip-
tions and not structure.” Id. at 7. The special master
reasoned, therefore, that expert testimony regarding how
one of ordinary skill would view the disclosures in the
specification was unnecessary. Upon Intuit’s motion, the
district court adopted the special master’s Motion for
Reconsideration R&R and denied Noah’s Motion for
Reconsideration. 4
    While the special master was considering the Motion
for Reconsideration, Intuit filed a Motion for Summary
Judgment of Invalidity. Intuit Inc.’s Mot. for Summ. J. of
Invalidity, Noah Sys., Inc. v. Intuit Inc., No. 06-CV-933
(W.D. Pa. June 25, 2010), ECF No. 94. Intuit argued that,
because the “access means” limitation was indefinite and
this limitation was in every asserted claim, all of the
asserted claims of the ’435 patent were invalid. Mem. in
Supp. of Intuit Inc.’s Mot. for Summ. J. of Invalidity at 1,
Noah Sys., Inc. v. Intuit Inc., No. 06-CV-933 (W.D. Pa.
June 25, 2010), ECF No. 95. In response to this argu-
ment, Noah again asserted that, because this case in-
volved the sufficiency of a disclosed algorithm, and not the
total absence of disclosure, Intuit could not establish
indefiniteness without first presenting evidence of how

    4   Responding to Intuit’s Motion to Adopt the Motion
for Reconsideration R&R, Noah filed declarations from
two experts, Jeffery Eppinger and Robert Kollar. These
declarations discussed how a person of ordinary skill
would view the sufficiency of the disclosures in the ’435
patent. Intuit filed a motion to strike these declarations
as untimely. The district court denied this motion as
moot in light of its decision to deny Noah’s Motion for
Reconsideration.
NOAH SYSTEMS   v. INTUIT INC                              10


one skilled in the art would view the specification. Noah’s
Resp. to Intuit Inc.’s Mot. for Summ. J. of Invalidity at 4–
6, Noah Sys., Inc. v. Intuit Inc., No. 06-CV-933 (W.D. Pa.
Aug. 9, 2010), ECF No. 102. In addition, Noah presented
declarations from Jeffery Eppinger and Robert Kollar to
establish that one skilled in the art “could readily identify
the structure or algorithm described in the specification of
the ’435 Patent that corresponds to the function of the
recited access means.” Id. at 9. As with the other mo-
tions in this case, the district court referred Intuit’s
Motion for Summary Judgment of Invalidity to the special
master.
    The special master, after reviewing the parties’ fil-
ings, recommended granting Intuit’s Motion for Summary
Judgment of Invalidity. Addressing the crux of Noah’s
argument, that expert testimony was required to estab-
lish that the asserted claims were indefinite, the special
master clarified that its “earlier claim construction ruling
was [not] based on a factual determination that, in effect,
some but not all of the structure for the ‘access means’
limitation was made in the disclosure of the ’435 Patent.”
Report and Recommendation of Special Master on Def.’s
Mot. for Summ. J. and Mot. to Strike at 7, Noah Sys., Inc.
v. Intuit Inc., No. 06-CV-933 (W.D. Pa. Dec. 17, 2010),
ECF No. 117. Instead, the special master explained that
the specification disclosed no algorithm and, therefore, no
structure. For this reason, the special master concluded
that the court was not compelled to consider the expert
testimony proffered by Noah because consideration of
what one of ordinary skill in the art would understand
from the specification is only necessary when the suffi-
ciency of a disclosed algorithm is at issue. 5 Id. at 11–12.


    5    The special master also recommended that the
district court deny Intuit’s Motion to Strike the Eppinger
11                                NOAH SYSTEMS   v. INTUIT INC


    After considering Noah’s objections to the Summary
Judgment R&R and Intuit’s response thereto, on January
24, 2011, the district court adopted the Summary Judg-
ment R&R and granted Intuit’s Motion for Summary
Judgment of Invalidity. 6 Accordingly, the district court
entered judgment in favor of Intuit.
   Noah timely appealed, and we have jurisdiction pur-
suant to 28 U.S.C. § 1292(c)(2).
                        DISCUSSION
    This court reviews a district court’s claim construction
de novo. Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448,
1453 (Fed. Cir. 1998) (en banc). Similarly, we review the
grant of summary judgment without deference. Dynacore
Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273
(Fed. Cir. 2004). Summary judgment is appropriate if no
genuine issues of material fact exist such that the moving
party is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(c); see also Ethicon Endo-Surgery, Inc. v. U.S.
Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). This
court reviews the evidence in the light most favorable to
the non-moving party. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986).
    On appeal, Noah raises two different, albeit closely re-
lated, arguments. Noah asserts that the district court


and Kollar declarations from Noah’s Response to the
Motion for Summary Judgment of Invalidity, either
because they were untimely filed or because they are moot
given the recommendation that the court disallow expert
testimony because no algorithm was disclosed which
would require, or even permit, explication by one of skill
in the art. Id. at 9–11, 11 n.1.
    6   In light of its conclusion with respect to invalidity,
the district court again denied Intuit’s Motion to Strike
the expert declarations as moot.
NOAH SYSTEMS   v. INTUIT INC                              12


erred when it: (1) construed the “access means” limitation
in a manner that rendered it indefinite; and (2) granted
summary judgment of invalidity without requiring Intuit
to present expert testimony regarding how one of ordinary
skill in the art would view the sufficiency of the disclosure
in the ’435 patent. Intuit responds that Noah waived the
claim construction argument it presents on appeal, and
that, even if we consider this argument, the district court
correctly construed the “access means” limitation to be
indefinite, and, therefore, properly granted summary
judgment of invalidity. We begin by addressing Intuit’s
assertion of waiver and then turn to Noah’s indefiniteness
arguments, which we address collectively.
                               I.
    “[P]resenting proposed claim constructions which al-
ter claim scope for the first time on appeal invokes the
doctrine of waiver as to the new claim constructions.”
NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282,
1296 (Fed. Cir. 2005) (citations omitted). Intuit argues
that Noah’s contention that the structure used to perform
the function associated with the “access means” limitation
“includes an algorithm by which a passcode is issued to a
user or agent, the passcode is entered by a user or agent,
and the passcode is validated, and equivalents thereof” is
new on appeal. Appellee’s Br. 18–19. Accordingly, Intuit
asserts that Noah waived this argument. We disagree.
    In its Opening Claim Construction Brief, Noah as-
serted that the corresponding structure was “the financial
accounting computer, as defined above, which is pro-
grammed to allow access to files on the computer upon
entry of a passcode.” Noah’s Opening Claim Construction
Br. at 25, Noah Sys., Inc. v. Intuit Inc., No. 06-CV-933
(W.D. Pa. Nov. 13, 2009), ECF No. 73. In support of this
13                                NOAH SYSTEMS   v. INTUIT INC


construction, Noah cited the flow chart in Figure 1 and a
portion of the ’453 patent’s specification, which states:
     Next, line 27 leads to box 32 where passcodes are
     issued to approved interactive account user(s) and
     agent(s). Agents can include accountants, brokers
     or other financial advisors. The account user(s)
     can include the first entity as well as authorized
     users of the first entity, such as the controller or
     bookkeeper of a business.
’435 patent col.6 ll.47–53. In addition, during the Mark-
man hearing, Noah cited lines 22–37 of column 6 of the
’435 patent as providing additional description of the
corresponding structure. This portion of the specification
discusses validation of user entries based upon “whether
the passcode matches the predesignated list of approved
passcodes . . . .” Id. at col.6 ll.29–30. In its Objections to
the Claim Construction R&R, moreover, Noah specifically
noted that the special master failed to address many of
the portions of the specification that, according to Noah,
provided the necessary corresponding structure for the
“access means.” Mem. in Supp. of Noah’s Objections to
and Mot. to Modify the Report and Recommendation of
Special Master on Claim Construction at 4–5, 6–9, Noah
Sys., Inc. v. Intuit Inc., No. 06-CV-933 (W.D. Pa. May 27,
2010), ECF No. 84.
    Significantly, all of the portions of the specification
that Noah relies upon before this court were cited either
in its opening claim construction brief, during the Mark-
man hearing, or in its opposition to the Claim Construc-
tion R&R. Despite Intuit’s suggestion to the contrary,
this is not a case where Noah is attempting to “adopt[] a
new claim construction position on appeal.” Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1346
(Fed. Cir. 2001) (citation omitted). And, it is not a case
NOAH SYSTEMS   v. INTUIT INC                              14


where Noah focused only on the nature of the computer
hardware described and “never [addressed] the adequacy
of the algorithm” disclosed in the ’435 patent before this
appeal. See HTC Corp. v. IPCom GmbH & Co., KG, 667
F.3d 1270, 1280, 1283 (Fed. Cir. 2012) (holding that, on
appeal, HTC waived its argument that the specification
disclosed no algorithm because, before the district court, it
only asserted that the specification was indefinite as
lacking disclosure of sufficient physical structure). All
portions of the specification that Noah now argues provide
the corresponding structure for the “access means” limita-
tion were relied upon for the same purpose by Noah
before the district court. Waiver, therefore, is not appli-
cable. Accordingly, we turn to the merits of Noah’s claim
construction and invalidity arguments.
                               II.
     Whether a claim complies with the definiteness re-
quirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim
construction, which we review de novo. 7 S3 Inc. v.
nVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001)
(citation omitted). Similarly, “[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 . . . that we review de novo.” Intellectual Prop.
Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc.,
336 F.3d 1308, 1318 (Fed. Cir. 2003) (internal quotation
omitted). Here, the disputed “access means” limitation
qualifies as a means-plus-function limitation under 35
U.S.C. § 112 ¶ 6. Means-plus-function claim limitations



    7   The specification shall 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.
15                                NOAH SYSTEMS   v. INTUIT INC


must satisfy the requirements of § 112 ¶ 2. S3 Inc., 259
F.3d at 1367.
    Construction of a means-plus-function limitation in-
cludes two steps. “First, the court must determine the
claimed function. Second, the court must identify the
corresponding structure in the written description of the
patent that performs the function.” Applied Med. Res.
Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.
Cir. 2006) (internal citations omitted). On appeal, neither
party disputes the function performed by the access
means, so the inquiry on appeal is whether the specifica-
tion adequately discloses a corresponding structure that
performs the function associated with the “access means”
limitation.
     A structure disclosed in the specification qualifies as a
“corresponding structure” if the specification or the prose-
cution history “clearly links or associates that structure to
the function recited in the claim.” B. Braun Med., Inc. v.
Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). Even
if the specification discloses a “corresponding structure,”
the disclosure 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 the second paragraph of
section 112.” In re Donaldson Co., 16 F.3d 1189, 1195
(Fed. Cir. 1994) (en banc). Under 35 U.S.C. § 112 ¶ 2 and
¶ 6, therefore, “a means-plus-function clause is indefinite
if a person of ordinary skill in the art would be unable to
recognize the structure in the specification and associate
it with the corresponding function in the claim.” AllVoice
Computing PLC v. Nuance Commc’ns., Inc., 504 F.3d
1236, 1241 (Fed. Cir. 2007) (citing Atmel Corp. v. Info.
NOAH SYSTEMS   v. INTUIT INC                            16


Storage Devices, Inc., 198 F.3d 1374, 1381–82 (Fed. Cir.
1999)).
    While it is undisputed that the question of whether a
claim is indefinite is based on how the claim limitation
would be understood by one of skill in the art, “the testi-
mony of one of ordinary skill in the art cannot supplant
the total absence of structure from the specification.”
Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A.,
Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Bio-
medino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53
(Fed. Cir. 2007). The prohibition against using expert
testimony in this manner is a direct consequence of the
requirement that the specification itself adequately
disclose the corresponding structure. AllVoice Comput-
ing, 504 F.3d at 1240 (“The test for definiteness asks
whether one skilled in the art would understand the
bounds of the claim when read in light of the specifica-
tion.” (citation omitted)).
    In cases such as this one, involving a special purpose
computer-implemented means-plus-function limitation,
“this court has consistently required that the structure
disclosed in the specification be more than simply a
general purpose computer or microprocessor.” Aristocrat
Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008). 8 We require that the specification
“disclose an algorithm for performing the claimed func-

   8    Because the ’435 patent requires a special purpose
computer specifically programmed to carry out the recited
functions associated with the “access means” limitation,
this case is controlled by Aristocrat and its progeny and
not In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303 (Fed. Cir. 2011), which is applicable only in
situations involving functions that can be accomplished
by “any general purpose computer without special pro-
gramming.” In re Katz, 639 F.3d at 1316.
17                              NOAH SYSTEMS   v. INTUIT INC


tion.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333 (“Thus,
in a means-plus-function claim ‘in which the disclosed
structure is a computer, or microprocessor, programmed
to carry out an algorithm, the disclosed structure is not
the general purpose computer, but rather the special
purpose computer programmed to perform the disclosed
algorithm.’ ” (quoting WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999))). The specifi-
cation can express the algorithm “in 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. v. DirecTV Grp., Inc.,
523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation
omitted). Simply disclosing software, however, “without
providing some detail about the means to accomplish the
function[,] is not enough.” Id. at 1340–41 (citation omit-
ted).
    Ultimately, on the basis of the special master’s rec-
ommendation, the district court concluded that the ’435
patent’s specification did not disclose an algorithm for
performing the function associated with the “access
means” limitation. This determination rendered all of the
asserted claims indefinite, as lacking the required corre-
sponding structure. Accordingly, the court entered sum-
mary judgment of invalidity in favor of Intuit.
    Noah argues that: (1) the district court erred because
it applied the incorrect case law; and (2) since the ’435
patent’s specification discloses some form of algorithm for
performing the function associated with the “access
means” limitation, the district court erred by not requir-
ing expert testimony before finding the claims indefinite
and invalid.
NOAH SYSTEMS   v. INTUIT INC                              18


                               A.
    Currently, our case law regarding special purpose
computer-implemented means-plus-functions claims is
divided into two distinct groups: First, cases in which the
specification discloses no algorithm; and second, cases in
which the specification does disclose an algorithm but a
defendant contends that disclosure is inadequate. Com-
pare Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371,
1383–85 (Fed. Cir. 2009) (no algorithm) with WMS Gam-
ing, 184 F.3d at 1349 (algorithm). This distinction is
important because we have clarified that, while “[i]t is
certainly true that the sufficiency of the disclosure of
algorithmic structure must be judged in light of what one
of ordinary skill in the art would understand the disclo-
sure to impart,” in a situation in which the specification
discloses no algorithm, “[t]hat principle . . . has no appli-
cation . . . .” Aristocrat, 521 F.3d at 1337; see Atmel, 198
F.3d at 1382 (“Fulfillment of the § 112, ¶ 6 tradeoff cannot
be satisfied when there is a total omission of structure.
There must be structure in the specification. This conclu-
sion is not inconsistent with the fact that the knowledge
of one skilled in the particular art may be used to under-
stand what structure(s) the specification discloses . . .
because such resources may only be employed in relation
to structure that is disclosed in the specification.”); see
also Default Proof Credit Card Sys., 412 F.3d at 1301
(“The inquiry under § 112, ¶ 2 . . . asks first ‘whether
structure is described in [the] specification, and, if so,
whether one skilled in the art would identify the structure
from that description.’ ” (quoting Atmel, 198 F.3d at
1381)). Where no structure appears, the question “is not
whether the algorithm that was disclosed was described
with sufficient specificity, but whether an algorithm was
disclosed at all.” Aristocrat, 521 F.3d at 1337. When the
specification discloses some algorithm, on the other hand,
19                               NOAH SYSTEMS   v. INTUIT INC


the question is whether the disclosed algorithm, from the
viewpoint of a person of ordinary skill, is sufficient to
define the structure and make the bounds of the claim
understandable. AllVoice Computing, 504 F.3d at 1245.
Noah argues that the district court improperly classified
this case as a case involving no disclosed algorithm, and,
because of this error, also improperly refused to allow
Noah to present expert testimony regarding the suffi-
ciency of the purportedly disclosed algorithm.
    Contrary to the district court’s conclusion and Intuit’s
arguments, Noah is correct that the specification discloses
an algorithm for the passcode function associated with the
“access means.” The specification clearly discloses that
authorized agents are provided with passcodes and that
agents cannot enter, delete, review, adjust or process data
inputs within the master ledger unless the passcode is
verified. ’435 patent Fig. 1, col.4 ll.47–56, col.6 ll.15–36.
This disclosure is sufficient to clearly link this structure
with the “access means” limitation. The district court
was, accordingly, incorrect when it said that the specifica-
tion disclosed no algorithm describing how the disclosed
function is to be carried out. This determination does not
resolve our inquiry in favor of Noah, however.
     This case involves a means-plus-function limitation
with two distinct functional components. The “access
means” performs the function of: “providing access to the
file of the financial accounting computer for the first
entity and/or agents of the first entity so that the first
entity and/or the agent can perform one or more of the
activities selected from the group consisting of entering,
deleting, reviewing, adjusting and processing the data
inputs.”    Claim Construction R&R at 38 (emphases
added). Thus, there are really two functions recited,
namely: (1) providing access to the file; and (2) once access
is provided, enabling the performance of delineated opera-
NOAH SYSTEMS   v. INTUIT INC                              20


tions. Any algorithm must, therefore, address both as-
pects of this functional language. Default Proof Credit
Card Sys., 412 F.3d at 1298 (“While corresponding struc-
ture need not include all things necessary to enable the
claimed invention to work, it must include all structure
that actually performs the recited function.” (citing Car-
diac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d
1106, 1119 (Fed. Cir. 2002))).
    We, thus, turn to the question of whether the specifi-
cation discloses an algorithm that enables “the first entity
and/or the agent [to] perform one or more of the activities
selected from the group consisting of entering, deleting,
reviewing, adjusting and processing the data inputs.”
Claim Construction R&R at 38. In addition, if we con-
clude that the specification does not disclose an algorithm
for performing this aspect of the recited function, i.e., the
specification discloses a partial algorithm, we must de-
termine whether that means this case falls into the “dis-
closed algorithm” line of cases as Noah argues, thereby
requiring consideration of what one skilled in the art
would understand from that disclosure, whether by way of
expert testimony or otherwise.
                               B.
    Noah asserts that Figure 1, and the portions of the
specification disclosing the issuance of passcodes and the
verification thereof provide the algorithm for both of the
functions associated with the “access means” limitation.
In the alternative, Noah asserts that Figure 3 and the
portions of the specification describing this figure sepa-
rately provide the algorithm for the second recited func-
tion. We disagree.
    Contrary to Noah’s assertion, the algorithm disclosed
in Figure 1 and the portions of the specification describing
the issuance and verification of passcodes do not provide
21                               NOAH SYSTEMS   v. INTUIT INC


an algorithm that enables “the first entity and/or the
agent [to] perform one or more of the activities selected
from the group consisting of entering, deleting, reviewing,
adjusting and processing the data inputs.” These portions
of the specification only describe how passcodes are issued
to authorized agents, ’435 patent col.4 ll.47–53, and how
the system prevents entries to the master ledger from
being processed unless the passcode is verified, id. at col.6
ll.14–36. These portions of the specification disclose that
a valid passcode is required before the agent’s order to
enter, delete, review, adjust, or process the data inputs in
the master ledger will be recognized by the system. This
discloses nothing about how the system is programmed to
enable the “entering, deleting, reviewing, adjusting and
processing [of] the data inputs.” These sections of the
specification merely disclose a means to unlock a file on a
computer. If a computer lacks a program to actually read
the data contained in the file, however, a user cannot
perform any operations on the data in the file.
     For example, imagine a password protected Microsoft®
Word document. Unless a user has a valid password, the
user cannot open the file. But, if the computer does not
have a word processing program, the user cannot edit the
file, even if he has the password to open it. Because data
is stored on a computer in binary code, a collection of 1s
and 0s, unless a user has a program to make this data
comprehensible to humans, one cannot enter, delete,
review, adjust, or process data in the file. The acts of
“entering” “deleting” “reviewing” and “adjusting” financial
transaction data, moreover, are specialized functions
which cannot be accomplished absent specialized pro-
gramming. Noah’s arguments regarding Figure 1 do not,
therefore, provide an algorithm for the “enabling the
performance” function associated with the “access means”
limitation.
NOAH SYSTEMS   v. INTUIT INC                                 22


      As with the portions of the specification describing the
issuance and verification of passcodes, Figure 3 and the
portions of the specification describing that figure also do
not disclose an algorithm to enable “entering, deleting,
reviewing, adjusting and processing the data inputs.” The
specification is clear that box 44 of Figure 1 is “where the
access to the data inputs in the master ledger is set forth.
. . . At this box 44, change orders, recording instruction
adjustments, manual transactions and the like can be
entered by the agents or the interactive users.” Id. at
col.6 ll.16–21. Access to the data inputs at box 44, there-
fore, “allows the agents to perform activities selected from
the group consisting of entering, deleting, reviewing,
adjusting and processing data inputs in the master ledger
. . . .” Id. at col.4. ll.53–56. The validity of an entry, i.e.,
the requested operation on a data input, moreover, is
determined in box 52 of Figure 1. At this point in the flow
chart disclosed in Figure 1, all of the functions associated
with the “access means” are completed. The flow chart
disclosed in Figure 3, however, is implemented after boxes
44 and 52. As a consequence, the flow chart disclosed in
Figure 3 has nothing to do with the non-password func-
tion associated with the “access means.”
    This conclusion is reinforced by the structure of Fig-
ure 3’s flow chart. Figure 3 discloses:
23                               NOAH SYSTEMS   v. INTUIT INC




Id. at Fig. 3. Notice that, after the validity of an entry
associated with the “access means” is determined in box
52, if the system does not need to produce any additional
outputs as a result of the box 44 operation, the flow chart
cycles from Figure 3 back to Figure 1 above box 44, ena-
bling the agent to perform a new operation. Accordingly,
unless the operation performed in box 44 requires the
system to produce an output, Figure 3 is superfluous.
Figure 3’s flow chart cannot, therefore, provide the algo-
rithm for the “enabling the performance” function associ-
ated with the “access means” because the system does not
use Figure 3’s flow chart until after the entire function of
NOAH SYSTEMS   v. INTUIT INC                               24


the “access means” is complete, and it uses the flow chart
only in certain circumstances.
    Finally, the specification itself makes clear that some
type of accounting software is required for the patented
system to operate. The specification states that the
master or host computer, upon which the master ledger is
stored, could be a personal computer. Id. at col.3 ll.26–32.
Where the master or host computer is a personal com-
puter, the specification explains that the computer must
use “off-the-shelf accounting software” to process the data
inputs. Id. at col.3 ll.32–36. When a personal computer is
not used, however, nothing in the specification explains
how the central or host computer is to be programmed to
allow processing of the data.
     As indicated above, a careful reading of the specifica-
tion indicates that such software would be implemented
inside box 44 in Figure 1. The portions of the specifica-
tion that describe what occurs inside box 44, however,
merely recite functional, not structural, language. E.g.,
id. at col.4 ll.53–56 (“This access to the master ledger . . .
allows the agents to perform activities selected from the
group consisting of entering, deleting, reviewing, adjust-
ing and processing data inputs in the master ledger.”);
col.6 ll.15–21 (“Line 41 then leads to box 44 where the
access to the data inputs in the master ledger is set forth.
. . . At this box 44, change orders, recording instruction
adjustments, manual transactions and the like can be
entered by the agents or the interactive users.”). This
type of purely functional language, which simply restates
the function associated with the means-plus-function
limitation, is insufficient to provide the required corre-
sponding structure. E.g., Blackboard, 574 F.3d at 1384;
Aristocrat, 521 F.3d at 1334.
25                               NOAH SYSTEMS   v. INTUIT INC


    In addition to pointing to Figures 1 and 3—which we
have already found to contain no disclosure for the second
functional element claimed—Noah attempts to fill the
gaps in its specification in two ways. First, it attempts to
import its “off the shelf software” reference from the
personal computer portions of its specification into these
claims. 9 Next, it asserts that individuals of ordinary skill
in the art would understand how to accomplish the func-
tion described with the assistance of such off the shelf
software. Appellant’s Br. 42 (citing Eppinger Decl.).
Neither argument aids Noah.
    In Blackboard we considered the adequacy of the dis-
closure for an “access control manager” limitation in a
means-plus-function claim. There, the patentee argued
that the access control manager could be “any computer-
related device or program that performs the function of
access control.” Blackboard, 574 F.3d at 1383. We con-
cluded that this type of disclosure was insufficient be-
cause “[b]y failing to describe the means by which the
access control manager will create an access control list,
Blackboard has attempted to capture any possible means
for achieving that end. Section 112, paragraph 6, is
intended to prevent such pure functional claiming.” Id.
at 1385. In reaching this conclusion, we rejected the
argument that no more specificity was needed to support
the claimed function because “a person skilled in the art
could readily fashion a computer-based means for per-
forming the ‘assigning function’ . . . .” Id. We explained
     9  The Court] ‘How do you get access to the file
where, where you start . . . handling the transactions
and, and all of these other functions?’ [Noah’s attorney]
‘Well that’s, that, I guess, is the point where I’m talking
about off the shelf software.’ ” Oral Argument at 5:46–
6:01, Noah Sys., Inc. v. Intuit Inc., No. 2011-1390, avail-
able at http://oralarguments.cafc.uscourts.gov/default.
aspx?fl=2011-1390.mp3.
NOAH SYSTEMS   v. INTUIT INC                             26


that the disclosure must identify the method for perform-
ing the function, whether or not a skilled artisan might
otherwise be able to glean such a method from other
sources or from his own understanding. Id. (citing Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1212 (Fed. Cir. 2003)). That various methods
might exist to perform a function is “precisely why” the
disclosure of specific programming is required. Id. So too
here, Noah’s efforts to find structure in the portion of a
specification linked to a different claim element or in the
common ken of a skilled computer artisan does not allow
it to “avoid providing [the] specificity as to structure”
required by § 112 ¶ 6. Id.
    For all of these reasons, we conclude that the specifi-
cation of the ’435 patent does not disclose an algorithm for
the “enabling the performance” function associated with
the “access means” limitation.
                               C.
    Because we conclude that the specification discloses
only a partial algorithm for the functional language
associated with the “access means” limitation, we must
determine whether this “partial disclosure” case should be
analyzed in accordance with our “no disclosed algorithm”
or “disclosed algorithm” cases. As discussed above, the
answer to this question determines whether the court was
required to consider Noah’s argument and evidence
regarding what one skilled in the art would understand
from the specification before determining whether the
claim was indefinite. Default Proof Credit Card Sys., 412
F.3d at 1302 (“[T]he testimony of one of ordinary skill in
the art cannot supplant the total absence of structure
from the specification. Because the specification of the
’182 patent discloses no structure corresponding to the
claimed function of the ‘means for dispensing,’ Default
27                               NOAH SYSTEMS   v. INTUIT INC


Proof cannot use the declaration of its expert to rewrite
the patent’s specification.” (citation omitted)). Given the
purpose for requiring disclosure of an algorithm in special
purpose computer implemented means-plus-function
claims, we conclude that where, as here, a claim recites
multiple identifiable functions and the specification
discloses an algorithm for only one, or less than all, of
those functions, we must analyze the disclosures as we do
when no algorithm is disclosed.
     Means-plus-function claiming involves a quid pro quo.
Med. Instrumentation, 344 F.3d at 1211 (“The duty of a
patentee to clearly link or associate structure with the
claimed function is the quid pro quo for allowing the
patentee to express the claim in terms of function under
section 112, paragraph 6.” (citation omitted)). In ex-
change for being able to draft a claim limitation in purely
functional language, “[t]he applicant must describe in the
patent specification some structure which performs the
specified function.” Valmont Indus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1042 (Fed. Cir 1993). And, impor-
tantly, the functional claim language covers only “ ‘the
corresponding structure, material, or acts described in the
specification and equivalents thereof.’ ” Id. (quoting § 112
¶ 6). Requiring the disclosure of a corresponding struc-
ture, thus, “confines the breadth of protection otherwise
permitted by” purely functional claiming. Id. (citation
omitted); see also Med. Instrumentation, 344 F.3d at 1211
(“If the specification is not clear as to the structure that
the patentee intends to correspond to the claimed func-
tion, 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.”).
   This court imposed the algorithm requirement to pre-
vent purely functional claiming when a patentee employs
a special purpose computer-implemented means-plus-
NOAH SYSTEMS   v. INTUIT INC                              28


function limitation. Aristocrat, 521 F.3d at 1333 (“The
point of the requirement that the patentee disclose par-
ticular structure in the specification and that the scope of
the patent claims be limited to that structure and its
equivalents is to avoid pure functional claiming.”). As we
have explained, the algorithm requirement is necessary
“[b]ecause general purpose computers can be programmed
to perform very different tasks in very different ways . . .
.” Id. Without disclosing any corresponding structure,
“one of skill simply cannot perceive the bounds of the
invention.” Finisar, 523 F.3d at 1341.
    Accordingly, where a disclosed algorithm supports
some, but not all, of the functions associated with a
means-plus-function limitation, we treat the specification
as if no algorithm has been disclosed at all. In such
instances, we are not faced with a disclosure which ad-
dresses itself to an identifiable function, but arguably
does so inadequately. We are faced with an identifiable
function, which all parties concede is claimed, but as to
which there is a total absence of structure. We cannot
allow disclosure as to one function to fill the gaps in a
specification as to a different, albeit related, function. To
hold otherwise would allow a patentee to employ generic
functional claiming “unbounded by any reference to
structure in the specification.” Biomedino, 490 F.3d at
948 (citation omitted). This outcome is impermissible
under the plain terms of § 112 ¶ 6.
    For these reasons, we conclude that the district court
did not err when it refused to allow expert testimony or
other evidence regarding what one skilled in the art
would understand from the specification before it con-
strued the “access means” limitation as indefinite, or
concluded that summary judgment of invalidity was
appropriate in light of that construction.
29                                 NOAH SYSTEMS   v. INTUIT INC


                        CONCLUSION
    Computer-implemented means-plus-function claims
are indefinite unless the specification discloses an algo-
rithm to perform the function associated with the limita-
tion. When the specification discloses an algorithm that
only accomplishes one of multiple identifiable functions
performed by a means-plus-function limitation, the speci-
fication is treated as if it disclosed no algorithm. Because
the ’435 patent’s specification discloses an algorithm for
performing only one of the functions associated with the
“access means” limitation, the limitation is indefinite. All
of the asserted claims contain this limitation; the asserted
claims are, therefore, invalid as indefinite.
                        AFFIRMED
                           COSTS
     Each party shall bear its own costs.