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The Question Left Unanswered In WMS

Gaming: What Is the Algorithm?
David C. Bohrer and Michael I. Frankel

B uilding on recent precedent recognizing the

patentability of software and software-related inven-
tions, the Federal Circuit, in WMS Gaming, Inc. v.
methods are unduly narrow, confusing, ill-suited to de-
scribing what the software does, and even out-dated.
The better solution is for patent applicants, examiners,
International Game Technology,1 addressed the scope of such and courts to apply the Unified Modeling Language
inventions drafted in means-plus-function format. The (UML), which was adopted by the software industry in
Federal Circuit held that a disclosed algorithm was prop- 1997 as a standard method to describe software algo-
erly part of the means for performing the identified func- rithms.
tion.2
In theory, restricting a software-related means-plus- Means-Plus-Function Claim Limitations
function claim to a disclosed algorithm is both straight- The discussion of algorithms and WMS Gaming is
forward and well-founded. Decisions in subsequent best understood after developing some common
cases reflect the accurate understanding that this is what ground regarding claims drafted using means-plus-
was taught in WMS Gaming.3 Moreover, within the function language.A means-plus-function limitation al-
software profession, an algorithm is well-understood to lows a patent applicant to express an element in a patent
express in human language the essential steps that a claim as a means for performing a specified function
computer is intended to take to achieve a particular re- without having to recite in the claim the structure nec-
sult. essary to perform that function.5 However, to protect
In practice, however, it is very difficult to identify the against overbreadth and ambiguity, the patent laws pro-
algorithm in the disclosures supporting a software-re- vide that such a claim does not cover every structure
lated claim. Neither WMS Gaming nor any of its prog- capable of performing the recited function; rather, it is
eny provide clear guidance as to how to determine the limited to the particular structure disclosed in the spec-
disclosed algorithm.4 Further confusing matters is that ification.6
WMS Gaming applied several different, if not outright Construing means-plus-function claim limitations
inconsistent, methods of discerning the disclosed algo- involves determining, as a matter of law, the claimed
rithm. function and the structure corresponding to that func-
The potential consequences of not having clear stan- tion.7 Function, practically speaking, is the activity
dards for describing an algorithm are both drastic and described in the language immediately following the
pervasive. Patent attorneys and companies are denied means for phrase.The claim language itself defines the
the tools necessary to properly evaluate the scope and functional aspect of a means-plus-function claim limi-
validity of their own and others software-related tation.8
patents. Worse yet, misconstruing the algorithm results Structure, practically speaking, is what is referred
in wrongly decided infringement rulings. A case in to by the means for language in the claim. After the
point is none other than WMS Gaming, in which the function is identified, the structure is identified by
failure to properly discern the disclosed algorithm re- looking to the patent specification (the written de-
sulted in the erroneous ruling that the accused elec- scription, the drawings, and other claims in the patent)
tronically controlled slot machine infringed the patent. to identify the structure corresponding to the claimed
These circumstances present a compelling case for function.9 Structure encompasses only that structure
rejecting traditional methods for disclosing the algo- that is necessary to perform the recited function.10
rithm in software-related patents. These traditional A means-plus-function limitation is literally in-
fringed by an accused device when the accused device
David C. Bohrer, a patent litigator in Dechert LLPs Silicon Valley performs the identical function specified in the claim
Office, has a nationwide practice representing high-technology and, in addition, the accused device employs a structure
clients. Mr. Bohrer can be reached at [email protected]. identical or equivalent to the structure described in the
Michael I. Frankel practices in the areas of intellectual property
and antitrust in Dechert LLPs Philadelphia office. Mr. Frankel can be
patent specification.11 The test for determining whether
reached at [email protected]. the structure in an accused device is equivalent to the

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structure in the means-plus-function limitation is ware related inventions are patentable but that the exact
whether the differences between the two structures are scope to be given software claims is equally unsettled.
insubstantial.12 The determination of what constitutes The scope issue, at least insofar as means-plus-function
structural equivalents of the identified structure is a claims were concerned, remained to be decided in
question of fact for the jury.13 In comparison, an ac- WMS Gaming.
cused device can infringe under the doctrine of equiv-
alents without infringing literally under 35 U.S.C. Scope of Software-Related Patents
112, 6 because the doctrine requires only substantial- Drafted in Means-Plus-Function Format
ly the same function, not identicality of a function as in WMS Gaming arose out of a cease and desist letter
112, 6.14 sent by International Game Technology (IGT) indicat-
ing that WMSWMS 400 slot machine infringed IGTs
Why Claim a Software-Related patent (the Telnaes patent).WMS responded by filing a
Invention in Means-Plus-Function declaratory judgment action. Following a bench trial,
Format? the district court held that the Telnaes patent was valid
Historically, computer programs were viewed as tex- and infringed. On appeal, the Federal Circuit affirmed
tual representations of mathematical algorithms and the findings of validity and infringement22 but also
thus potentially appropriate subjects for copyright pro- found significant error in the district courts construc-
tection, but not for patents.15 In 1994, the en banc tion of the software-related means-plus-function ele-
Federal Circuit decided In re Alapatt,16 clearing the way ments of the disputed claims.
for much greater software patent protection. The deci- The dispute centered on a slot machine design that
sion established that claiming an inventive algorithm as electronically manipulates the odds of winning. To
part of some physical apparatus such as a general pur- maintain and increase the appeal to players, the market
pose computer or standard hardware or memory ele- demanded slot machines with higher payoffs.To gener-
ment satisfied the requirements for patentability. The ate higher payoffs without decreasing the slot machines
Alapatt court reasoned that a general purpose comput- profitability, the probability of winning any one play
er in effect becomes a special purpose computer once it had to be decreased. However, to decrease the payout
is programmed to perform particular functions pur- odds for a mechanical slot machine, either more reels or
suant to instructions from program software.17 The in- larger reels with more stop positions must be added.
sight that patent applicants derived from this analysis This approach reduced the machines appeal since play-
was that, if they wanted to patent software, they needed ers perceive physically larger machines or machines
only to define their claims in terms of a computer pro- with more reels as being less good in terms of win-
gram implemented in a machine.18 ning and payout chances. So the challenge faced by the
Because the Alapatt decision dealt with means-plus- inventors of the Telnaes patent was to increase payouts
function elements and spoke of a computer pro- and decrease the probability of winning without in-
grammed to perform an inventive algorithm as a creasing the physical size of the machine.
means, many patent prosecutors took the case as a sig-
nal that this claiming format provided an easy method The Telnaes Patent
of claiming inventions featuring programmed devices.19 The Telnaes patent discloses an electronically con-
A large number of software patents have in fact been trolled slot machine that decreases the probability of
claimed in means-plus-function language, and a corre- winning while maintaining the external appearance of
spondingly large percentage of these patents have ma- a standard slot machine. To decrease the probability of
tured to where the disputed terms are now being winning, the control circuitry extends the reel virtual-
litigated.20 ly to include a range of numbers greater than the
This is not to say that Alapatts legacy is confined to number of actual stop positions and then maps these
the use of the means-plus-function format to protect numbers non-uniformly to the actual stop positions.
novel software. Other claiming techniques, such as When in play, the control circuitry randomly deter-
claiming the steps performed by the programmed in- mines the stop position of each reel and then stops the
structions as a process, have been found to satisfy the reels at the randomly determined positions. The reels
patentability requirements.21 The nature and scope of only function is to display the randomly chosen result.
such other claiming techniques, as well as the potential- For example, if a reel with 22 stop positions contains
ly broader patent coverage available under these tech- a cherry symbol in two positions, the probability of
niques, is the subject of other articles. Suffice it to say stopping at a cherry is two out of 22 or 0.0909. If the
that in the post-Alapatt era it is well-settled that soft- reels were virtually extended to include 44 virtual

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stop positions with the cherry symbol mapped to num- [6] means for stopping said reel at the angular
bers seven, 22, and 37, then the probability of stopping position represented by said selected number.
at the cherry is three out of 44 or 0.0681.23 Thus, the
probability of stopping on the cherry symbol is reduced The parties agreed that the accused device contained the
without altering the physical appearance of the slot ma- first three claim elements.The parties dispute centered on
chine. the last three means-plus-function elements of claim 1.
Of particular significance was the construction given
The WMS 400 by both the district court and the Federal Circuit to the
Unlike the apparatus disclosed in the Telnaes patent, means-for-assigning element.The district court, rely-
which determines the stop positions first and then de- ing on the parties stipulation that the Telnaes patent
termines the payoff based on those stop positions, the disclosed a microprocessor, or computer, to control the
accused product, the WMS 400, calculates the payoff operation of the slot machine, held that the means-
first and then chooses stop positions that represent that for-assigning element was satisfied by an algorithm
payoff.The WMS 400 randomly selects a number from executed by a computer. Under the district courts
a range of 1 to 632. Once selected, that number is construction, the means-for-assigning limitation cov-
mapped to a first multiplier stored in memory. Next, a ered any table, formula, or algorithm that performed
second number is randomly selected from a second the claimed function.
range of 1 to 632, and once selected, it is mapped to a On appeal, the Federal Circuit held that the district
second multiplier stored in memory.The two multipli- court had erred by failing to limit the means-for-as-
ers are then multiplied together to determine the pay- signing element to the exact algorithm disclosed in the
out value. If there is only one way to display the payout, Telnaes patent specification. The Federal Circuit stated
then the reels are stopped on those symbols. If, howev- that, [i]n a means-plus-function claim in which the
er, there is more than one arrangement of symbols that disclosed structure is a computer or microprocessor,
can indicate the payout, then a third random number is programmed to carry out an algorithm, the disclosed
necessary.This third random number determines which structure is not the general purpose computer, but
one of the possible reel arrangements will be displayed. rather the special purpose computer programmed to
perform the disclosed algorithm.24
Claim Construction WMS Gaming effectively limits the software-related
The construction of Claim 1 of the Telnaes con- means-plus-function limitation to the disclosed algo-
trolled the determination of infringement. Claim 1 rithm. In theory, this seems straightforward; indeed, sub-
reads as follows: sequent cases reflect an accurate understanding that this
was the holding of WMS Gaming.25
A game apparatus, comprising: The theoretical emphasis on algorithms is further
supported by the fundamental nature and purposes of
[1] a reel mounted for rotation about an axis computer hardware and software. Although computer
through a predetermined number of radial posi- hardware is a real machine, when turned on, it does not
tions; perform any of its operations but rather waits for some
signal from the outside to set the machine in motion.26
[2] means to start rotation of said reel about said The computer hardware needs the software or program
axis; to tell it what behavior is desired.27 The creative and in-
ventive action taken by the computer comes in with the
[3] indicia fixed to said reel to indicate the an- software.
gular rotational position of said reel; Accordingly, softwares raison-dtre is causing the
computer to behave in a certain fashion.28 The question
[4] means for assigning a plurality of numbers then is how to describe the creative and novel behavior
representing said angular positions of said reel, said that the software causes the computer to perform.
plurality of numbers exceeding said predeter- There are different levels of abstraction that are used
mined number of radial positions such that some to describe what the software is telling the computer to
rotational positions are represented by a plurality do.The lowest level of abstraction is machine language,
of numbers; also known as object code, which only the computer
understands (as opposed to people) and which is what
[5] means for randomly selecting one of said the computer is actually being told to do. A somewhat
plurality of assigned numbers; and higher level of abstraction is source code (e.g., Ada,

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Pascal, C++, JAVA, COBOL, Fortran, etc.), which is The Federal Circuits determination in WMS
not directly understood by the computer until it is Gaming of the disclosed algorithm in the Telnaes patent
compiled into machine code but which also is difficult serves only to confuse an already uncertain situation.
for all but a small number of persons skilled in the art The Federal Circuits decision did not comply with its
to understand. At a still higher level of abstraction are own rule that the disclosed algorithm must be found in
algorithms, which are easier for professional persons to the the written description part of the specification as
understand and convey the action that the computer is distinguished from the language of the claims.29
intended to perform (as compared to what the com- The Federal Circuit said that the structure corre-
puter is actually told to do). sponding to the means-for-assigning element was a
Algorithms are analogous to engineering blueprints; microprocessor programmed to perform the algorithm
they provide a medium through which to communi- illustrated in Figure 6 of the Telnaes patent.30 The
cate a particular software design and to confirm agree- court goes on to describe the algorithm allegedly dis-
ment among the interested parties as to the intended closed in Figure 6 as (1) the number of single numbers
action to be taken by the computer. In short, it is en- exceeds the number of stop positions; (2) each single
tirely appropriate for the Federal Circuit to choose to number is assigned to only one stop position; (3) each
focus on software algorithms when comparing accused stop position is assigned at least one single number; and
and claimed software. (4) at least one stop position is assigned more than one
In practice, however, the determination of the pre- single number.
cise algorithm disclosed in the patent can be problem- However, items 1 and 4 of the Federal Circuits al-
atic and complex. These practical issues are manifest in gorithm are virtually the same as the function expressed
none other than the decision that focused software in the claim language.The insight is that the algorithm
comparisons on algorithmsWMS Gaming. is properly derived from functional language notwith-
standing directions to the contrary. At least one lower
How Should the Disclosed Algorithm court decision, Faroudja Laboratories, Inc. v. Dwin
Be Described? Electronics, Inc.,31 has interpreted WMS Gaming in this
Having announced the rule that the disclosed algo- fashion. In Faroudja, the court said that WMS Gaming
rithm is a limitation on the claim, the WMS Gaming presents a special case in which the structure is altered
decision proceeds to apply the rule without first dis- by virtue of its programmable nature, such that a court
cussing what an algorithm is, how it is used, and how it must . . . limit the structural element to its functional
is usually (or should be) expressed. There is no discus- purpose by importing functional language into the
sion in WMS Gaming about how one skilled in the art structural specification.32
of software engineering would be expected to review a Moreover, there are aspects of the structure of Figure
patent to determine what the algorithm consists of, nor 6 of the Telnaes patent that were not read into the
is there any guidance provided to the inventor as to claim. Beginning at column 4, line 34 of the patent,
how to disclose the software algorithm in the patent. Figure 6 is described as a diagrammatic form of repre-
The absence of this discussion, which characterizes not sentation of one standard type of reel where circle 46 il-
just WMS Gaming but all subsequent Federal Circuit lustrates 22 positions of numbers on the reel. The
and lower court decisions applying WMS Gaming, is of disclosure then states that the table entry in the ran-
tremendous significance. dom number generator for the machine is illustrated by
As discussed above and again in later sections, soft- the circle 50. Such table entry of numbers assigned
ware algorithms are a well-recognized means of ex- in the random number generator was not read into the
pressing the logic of computer programs. However, claim. The Federal Circuit did not say that the algo-
there are many different techniques that can be used to rithm included the step of providing a single number
disclose an algorithm, and each such technique presents for each location on the reel (as shown by circle 46) or
an equal if not greater array of choices as to the level of that additional single numbers were provided for each
detail provided. Absent guidance from the courts, the location on a table entry in the random number gener-
algorithm disclosed in a patent becomes a subjective re- ator.The Federal Circuit merely indicated that such ad-
flection of the interests of the inventor as opposed to a ditional numbers were assigned but not how. The
legitimate standard that has application across case lines. attempted but ultimately incomplete application of
WMS Gaming essentially teaches that the disclosed al- Figure 6 presents one more question regarding the ap-
gorithm is the standard by which to compare different propriate way to find the disclosed algorithm.There ex-
software programs, but the decision provides no guid- ists a compelling basis for revisiting the nature and
ance as to how such a comparison should proceed.

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purposes of software algorithms from the perspective of column totals to be tallied, but manipulations of the
persons skilled in the art of writing software. original data transactions may not be permitted. Later,
when a fiscal year has expired, a spreadsheet may not
Misunderstanding of the Software Art permit any changes at all to its content.
Courts will have to learn a better way to evaluate The functional perspective consists of the processing
software patent specifications in order to describe and steps that access data and execute formulas, a more vis-
compare algorithms effectively. The disclosure of algo- ible component of algorithms and too often the sole
rithms in a patent specification also must better serve focus of software patent specifications.35 The individual
the needs of those who mean to evaluate the specifica- formulas attached to distinct cells in a spreadsheet are
tion for these purposes. Patentees, potential infringers, the functions that it executes when appropriately re-
patent examiners, attorneys, judges, and even jurors quested by the user. Some software systems impose ad-
need a method for communicating the algorithms that ditional requirements on the timing of the execution of
define the scope and detail of software patent claims functional processing, but the same three essential ele-
that is simultaneously accurate, complete, and digestible. ments are always present.
Unfortunately, the most common methods employed Software patent litigation usually concerns the logi-
by patent applicants to document software algorithms cal structure of an algorithm (i.e., what it does), as op-
satisfy little or none of these criteria. Fortunately, the posed to its physical structure (i.e., how it does it). For
software industry itself has already adopted a satisfacto- example, a logical structure may specify that 10 func-
ry method for specifying software algorithms in the tional steps must be performed to manipulate three ta-
form of its standardized UML. bles of data elements. By contrast, the physical structure
results from modifying the logical structure to accom-
The Inherent Structure of modate engineering constraints on memory space or
Software Algorithms processor speed.The physical structure may specify that
Persons of ordinary skill in the art of writing soft- the 10 processing steps are divided into two program-
ware recognize that all software algorithms have an in- ming subroutines, each with five processing steps and
herent structure that, within reason, can be executing in parallel, and that two of the three data ta-
unambiguously specified.33 Although software algo- bles have been combined into one larger table to im-
rithms can be extremely complex, the nature of soft- prove data access time for the user. Although details of
ware has not changed since it was first invented more physical structure can help those skilled in the art un-
than 50 years ago. All software algorithms consist of (1) derstand how the patentee implemented the algorithm,
data that (2) under certain state conditions (3) are ma- such techniques are familiar to the average software en-
nipulated by functional processing.34 Understanding gineer and therefore usually unnecessary to enable im-
each of these perspectives of an algorithm, first sepa- plementation. Further, instead of facilitating an
rately and then operating together, is necessary to com- understanding of what the algorithm is ultimately ac-
plete ones understanding of its scope. complishing, such physical details distract from this
The data perspective discloses only the data elements goal.
manipulated by the algorithm and the navigational Another inherent characteristic of software algo-
paths between sets of data elements necessary for the al- rithms is that all software functions are event driven.36
gorithm to traverse that data during particular func- That means that all functional processing within a soft-
tional processing.This perspective discloses only data at ware algorithm executes upon the occurrence of a de-
rest and is akin to viewing the data in a spreadsheet de- fined eventthe input into a computer of a user
void of any underlying formulas that would modify request for information, an internally recognized data
those data values. condition (e.g., exceeding a safety threshold value), or
The state conditions of an algorithm disclose its most the expiration of a specified time period. Some events
critical decision-making logic. This logic acts as an ad- directly trigger functional processing to occur, while
ministrator for the algorithm and reacts to events by other events merely enable particular functional pro-
triggering one or more functional calculations or by cessing to occur when other events are later detected.
modifying the internal state of the system to recognize Both types of events cause algorithms to transition
either that additional functional processing is now per- through a series of distinct qualitative states.These state
mitted to occur if appropriately triggered or that addi- conditions are a critical component in the logical struc-
tional functional processing is no longer permitted to ture of complex software algorithms, and they provide
occur while the system remains in its new state. For ex- two important benefits. First, complex algorithms are
ample, in an audit state, a spreadsheet may permit final more easily digestible when its functions are evaluated

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in the context of the state in which they execute. Second, ganized by its nature, symbology must be standardized,
events that trigger software execution are a convenient and a common grammar must be in operation. Just as
mechanism by which to associate a claimed function structural complexity is universally communicated
with its supporting structural components in the algo- among architects and contractors via blueprints, software
rithm. complexity requires its own appropriate communication
vehicle if courts are to understand what software engi-
The Goals of Algorithmic Disclosure in neers intended their software programs to do.
Software Patent Specifications
To facilitate evaluating the scope of a software patent Inadequate Methods of Disclosing
under WMS Gaming, a specification disclosing the algo- Algorithms
rithm must permit a thorough human understanding of The methods commonly used by patent applicants to
the relevant logical structure of the software function describe algorithms in patent specifications can provide
being claimed.Therefore, to determine whether two al- some context for the algorithm being evaluated.
gorithms are structurally identical or structurally equiva- However, these disclosures do not provide the minimum
lent, the algorithms must be disclosed in sufficient detail necessary accurate, complete, and digestible disclosure of
and from multiple perspectives. that algorithm needed by those who must consider the
Detail means precision in disclosure and facilitates an functional claim in dispute. Patent applicants use these
accurate comparison of algorithms where the issue re- methods separately and sometimes in concert. However,
sides. For example, if the distinction at issue between two using them in concert does not resolve the inadequacies
algorithms concerns the scope of data they can process, that each type possesses individually. The following ex-
the algorithmic disclosure must list and define the data amination of the most common methods demonstrates
elements processed by the algorithm and the relevant these inadequacies.
navigable paths for traversal among those data elements.
Without such detail appropriately specifying the struc- Source Code
ture of the data upon which the algorithm executes, the Some software patent specifications disclose the pro-
resolution of an issue that turns on data scope becomes gramming source code used to implement the function
extremely difficult. being claimed as a method of disclosing the algorithmic
An algorithm must also be disclosed from all relevant structure.This method frustrates human understanding of
data, state, and functional perspectives for a proper evalu- the algorithm for a number of reasons. First, even the
ation of its structure to proceed. A software patent claim most readable source code is organized for the purpose
dispute that concerns the scope of functional processing of instructing a machine and does not lend itself to im-
performed by the algorithm cannot be easily resolved if mediate comprehension even by those skilled in the art.
the patent specification discloses only a set of data tables Software engineers would sooner review a graphic
purportedly manipulated by the claimed function. model or textual summary of the algorithm embedded
Similarly, a purely functional specification devoid of any in source code than read the source code itself, unless the
detail concerning the data structure of the algorithm code needs to be debugged or modified. Moreover, be-
produces a necessarily skewed understanding of its scope. cause software engineers are usually conversant in only a
Like any complex engineered invention, software algo- few of the multitude of existing programming languages,
rithms have multiple interconnected layers that must be disclosure of source code in any particular programming
understood first separately and then in unison to fully language is not necessarily understood by a majority of
comprehend the scope and effect of their structure. those skilled in the software art.
Finally, the human factor here is paramount. Second, source code by definition is the merger of
Algorithms are creatures of human thought, intended to both the logical and physical structure of the algorithm,
represent what humans desire a computer processor to which, as discussed above, impedes comprehension of the
do. Algorithms exist distinct from the computer instruc- logical scope at issue in the algorithm.Third, source code
tionsprogramming codewhich represent what a merges the data, state condition, and functional perspec-
computer is actually instructed to do using a machine- tives of algorithms into one continuous form.
interpretable language.The difference is not merely one Understanding complex algorithms begins with separat-
of form or level of detail.The critical difference is that an ing these views, a goal that source code by its nature pre-
algorithm is a vehicle for human beings to communicate vents. A related practical consideration is that source
to one another the structure of a software function. code typically qualifies for protection against unautho-
Therefore, complexity must be managed for human con- rized copying or other use under the trade secret doc-
sumption, algorithmic detail must be appropriately or- trine. However, trade secret status is contingent on

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maintaining the confidentiality of the source code, the memory chips on which software and data will be
which is obviously lost if the source code is disclosed in stored, the microprocessors that will execute the soft-
an issued patent. ware instructions, and the physical communication
links over which data will travel into or out of the
Flow Charts system. Although a hardware schematic can help un-
Flow charts as a method of algorithmic disclosure are derstand the patentees preferred embodiment of the
an improvement over source code but still often frus- machine and may also directly bear on patent claims
trate human understanding. As with source code, flow beyond the means-plus-function claims at issue in
charts in practice sometimes mix physical and logical regard to the algorithm, such a diagram does not dis-
structure together, but they are capable of representing close the algorithms logical structure. A hardware
only logical structure. The graphic symbology used on schematic generally discloses only where an algo-
flow charts is generally straightforward to follow even rithm executes, not what it does upon execution.
by laypersons, and the symbols themselves have been
mostly standardized throughout the software industry Concept Diagrams
through decades of practice. Flow charts, however, pres- Concept diagrams are sometimes included to ease
ent two problems. First, they disclose only the func- the reader into the patent subject matter or to con-
tional processing perspective of an algorithm, leaving vey a novel idea graphically. For example, Figure 1 is
the data and state condition perspectives to be inferred a reproduction of the concept diagram included in
after frequent readings. Second, flow charts do not scale the Telnaes patent at issue in WMS Gaming.40 It
up easily, so once an algorithm starts to require multi- shows a wheel-like graphic used to convey the con-
ple pages of flow charts to be comprehensive, one gets cept of virtual reel stop positions within the slot ma-
easily lost following the logic as they jump from page chine. This figure is not altogether unhelpful in
to page. Therefore, while flow charts can be accurate understanding the algorithm; in fact, after some brief
disclosures of functional processing, they are incomplete study, it does generally convey the novelty claimed in
and lack digestibility. the patent. However, this kind of diagram is not used
Benghiat v. Itron37 provides a compelling example of by those skilled in the art of software engineering,
how the reliance on flow charts (both by the patent ap- and it contains no formality in symbology or gram-
plicant and the court) may result in an erroneous inter- mar that can ensure that it is interpreted as intend-
pretation of the software algorithm.The patent at issue ed by the inventor. An example of this frailty is that
in Benghiat disclosed more than 10 pages of flow charts this diagram is also inaccurate on its face. As a wheel
encompassing not just the algorithm necessary to per- with radially extending spokes from the center
form the function called out in the claim but also addi- (physical reel stop positions) to the outer circle (vir-
tional processing steps, such as the manner in which
data was stored in memory following the execution of
the algorithm. The flow charts also were complex and
detailed, which, particularly as the reader moved from
page to page, made it extremely difficult to follow the
different algorithmic functions. The court in Benghiat
nonetheless determined as part of the claim construc-
tion that the flow charts, in their entirety, disclosed the al-
gorithm.The court effectively read all of the flow charts
into the claim and thereby gave the claims an unduly
narrow interpretation.38 The court grounded this ex-
treme position on little more than passing reference to
a computer hornbook stating that algorithms may in-
volve the use of a flow chart.39

Hardware Schematics
Another type of diagram frequently included in soft-
ware patent specifications is the hardware schematic,
which graphically describes the hardware components
that comprise the physical machine that is the subject
of the patent.These diagrams include representations of

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tual reel stop positions), the graphic implies that that the same algorithm.44 External norms include rules
the assignment of virtual reel stop positions to phys- for determining whether data, state conditions, or
ical ones is limited by the particular increase of functional processing are missing or are being incor-
space available as the spoke moves farther from the rectly distributed among the objects on the diagram.
center. The actual algorithm claimed in the specifi- Internal norms are analogous to English grammar
cation was more flexible than that because it per- rules, and external norms are analogous to guidelines
mitted anywhere from one to an unlimited number for writing an effective journal article.
of virtual stop positions to be assigned to any one Figures 2 through 7 illustrate how UML would be
physical position.41 used to communicate the slot machine algorithm dis-
closed by the Telnaes patent specification in WMS
The Unified Modeling Language Gaming. Figure 2 shows the data perspective, revealing
as the Industry Standard that the objects Lever, Reel, Bet, Player, Slot Machine,
The software industry has already resolved for it- etc. are the basic objects about which the algorithm is
self how to represent algorithms accurately, com- concerned. Figure 2 also indicates, by their allocation,
pletely, and in a digestible form. After decades of which object each data element best describes. Certain
experimentation with various representational objects on this diagram have state conditions that trig-
methods, UML was adopted in 1997 by the software ger or enable functions within the algorithm. These
industry as its standard method for communicating state conditions and triggering events are distributed to
software algorithms among those skilled in the art.42 the Reel, Bet, and Lever objects as shown on Figures
UML has also served as a basis for non-software pro- 3, 4, and 5, respectively. Each state in these diagrams is
fessionals to communicate with software engineers further allocated a small portion of the functional pro-
regarding the completeness and accuracy of algo- cessing steps of the gaming algorithm, as shown in
rithms under evaluation. Figure 6.Then, as shown in Figure 7, UML can also tie
UML consists of a series of diagrams variously tar- the algorithmic pieces together so that a start-to-finish
geted toward each inherent perspective of algorithmic execution path can be followed.
structure: data, state conditions, and functional process- Of particular importance for means-plus-function
ing. UML is based on the theory of object-oriented claims in software patents is that UML can be used to
software development, which manages the inherent disclose the algorithm of a claimed function regardless
complexity of software systems by purposefully organ-
izing and distributing algorithmic structures around the
objects naturally found in the subject matter domain
being automated by the system.43 This type of algorith-
mic organization facilitates understanding because the
most stable, broadest sweeping rules about the patent
subject matter are examined first. State logic and func-
tional processing are then more easily digested because
they have been partitioned into smaller pieces and can
be evaluated in context of the broader goals of the al-
gorithm. Furthermore, because these data, state and
functional views are partitioned, each one can be pre-
cisely specified without duplicating the information on
another view. Complex systems may require more than
one subject matter domain to be modeled, and each
domain often has multiple objects, each with as much
associated algorithmic structure necessary to fully de-
scribe its behavior.
UML diagrams are subject to both internal and ex-
ternal norms that prevent gross distortions of the al-
gorithm from being asserted. Internal norms are
derived from the definition of UML itself and include
rules for proper use of graphic symbols, completeness
of information, and consistency among diagrams that
purport to represent interconnected perspectives of

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16 Intellectual Property & Technology Law Journal Volume 16 Number 4 April 2004
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of whether the patentee originally used UML to de- and completely they wish to disclose their algorithm to
velop the software and regardless of whether the actu- maximize the protection they seek.
al source code is based on any object-oriented software
development principles. Similarly, UML can be used in Application of UML Dictates a
litigation forums to persuade fact-finders of an algo- Different Result in WMS Gaming
rithms limitations, even if the patent author did not The application of UML demonstrates significant
use it.The scope of an algorithm, that is, what it does, differences between the disclosed algorithm in the
can be represented in UML at any stage because an al- Telnaes patent and the algorithm used in WMS 400,
gorithms inherent logical structure never changes. Of the accused product in WMS Gaming. These differ-
course, each patent owner must gauge how accurately ences cannot be characterized as insubstantial. There

Volume 16 Number 4 April 2004 Intellectual Property & Technology Law Journal 17
IPT April 04_inside 5/3/04 10:30 AM Page 18

was clear error in the trial courts finding that the is operated. Then, as shown on Figure 3, when the
claimed and accused algorithms were structural equiv- Player pulls the Lever, the Reels as a group are set in
alents. The Federal Circuit in WMS Gaming therefore motion, but each reel independently chooses its own ran-
should not have affirmed the finding that WMS 400 dom Virtual Stop Position and then brakes at the corre-
infringed the Telnaes patent. This, in turn, suggests a sponding Physical Stop Position. Once every Reel has
compelling need for the courts to reevaluate how they stopped, the algorithm looks up the resulting symbol
determine and compare the algorithms in accused and combination to determine the Payout Odds.
claimed software or software-related products. By contrast, a Virtual Stop Position is not employed
In Figure 8, UML is used to describe the data per- by the algorithm in the accused device. Instead, as
spective of the accused device in WMS Gaming. The shown in Figure 8, the accused device starts by using
objects shown enclosed in the shaded box represent the two randomly selected Multipliers to determine the
portion of the accused devices algorithm at issue. In Payout Odds and the corresponding symbol combina-
Figures 2 and 3, the Telnaes patents disclosed algo- tion to show the Player.45 Once the desired symbol
rithm is similarly highlighted. On first examination, combination is determined, one of the potentially many
the algorithms for the claimed and accused devices combinations of Physical Stop Positions that would dis-
contain some similar basic elements, such as a Reel, its play that symbol combination is chosen. Finally, the
Physical Stop Positions, and that each combination of Reels are commanded as a group to brake at the chosen
three symbols (e.g.,Cherry, Bar, Double-Bar) are associ- set of Physical Stop Positions.The UML representations
ated with a Symbol Combo Payout for the player. of these algorithms demonstrate that:
Because these are the essential elements of all slot ma-
chine gambling, any related algorithm, no matter how 1. Where the Telnaes patent employed a virtual expan-
diverse, would necessarily contain these objects. In ad- sion of the stop positions on a slot machine reel, the
dition, both algorithms are targeted at manipulating the accused device contained no such algorithmic struc-
Payout Odds without changing the physical Reels on ture.
the machine.
What is different about these algorithms is both the 2. Where the Telnaes patent randomly selected Virtual
mechanism by which the Payout Odds are manipulated Stop Positions, the accused device randomly selected
and whether the Reel positions drive the Payout Odds the Payout Odds (via dual multipliers) and then ran-
or vice versa. As shown in Figure 2, in the Telnaes domly selected (if more than one possible) the Physical
patent, one or more Virtual Stop Positions are assigned Stop Positions on the Reel.
to each Physical Stop Position before the slot machine

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3. Where the Telnaes patent let the Reels spin independ- garding application of the disclosed algorithm, the mis-
ently and then derived the Payout Odds from the re- takes of algorithmic interpretation that have occurred
sult, the accused device determined the Payout Odds in WMS Gaming as well as in other decisions interpret-
first and then stopped the Reels accordingly. ing computer implemented means-plus-function claim
limitations are likely to re-occur. Courts should require
In WMS Gaming, the district court found that the al- the application of UML to determine the disclosed al-
gorithm implemented in the accused device was the gorithm.
equivalent of the algorithm disclosed in the Telnaes
patent.46 The district court adopted expert testimony Notes
that the accused devices assignment of a combination
of numbers (i.e., the two random multiplier selections 1. WMS Gaming, Inc. v. International Game Technology, 184
and the one random choice of Physical Stop Position F.3d 1339 (Fed. Cir. 1999).
combinations) to a Physical Stop Position was not sub- 2. Id. at 1348-1349.
stantially different than the Telnaes patents assignment 3. See Itron v. Benghiat, 169 F. Supp. 2d 1073 (D. Minn. 2001);
of a single number (each Virtual Stop Position) to a GTE Wireless, Inc. v. Qualcomm, Inc., 188 F. Supp. 2d 1201
Physical Stop Position.47 Therefore, the court deter- (S.D. Cal. 2002); ABB Automation, Inc. v. Schlumberger
mined, the algorithmic structures in the two devices Resource, 2003 WL 1700013 (D. Del. 2003).
4. See William M. Atkinson and John A.Wasleff,The Devil Is
were equivalent.48
In The Details: Patent Protection For Software Driven
The district courts finding, however, was based on
Inventions After WMS Gaming, 17 No. 9 CILW 6, 8 (Sept.
the erroneous assumption that the accused device was
2000) (Atkinson, Devil is in the Details) (What the WMS
performing assignments of combinations of numbers. Gaming decision doesnt do, however, is provide guidance
As the UML data model for the accused device shows, concerning the degree of difference between two software
there was no pre-assignment of the individual programs necessary to avoid infringement.This decision . . .
Multipliers to any other data element. Furthermore, the is left for future cases.).
final set of Physical Stop Positions, if more than one set 5. 35 U.S.C. 112, 6.
was possible to display the desired symbol combination, 6. Id. See Valmont Indus, Inc. v. Reinke Mfg. Co., 938 F.2d
was randomly selected, not pre-assigned. If a pre-assign- 1039, 1042 (Fed. Cir. 1993).
ment had existed, a random selection would not be 7. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus.
necessary. Inc., 145 F.3d 1303, 1308 (Fed. Cir. 1998).
The district court also erred when it accepted the 8. See id.
experts characterization of the issue as concerning how 9. See id.
many numbers were being assigned. The more integral 10. See id, quoting 35 U.S.C. 112, 6.
question should have been what numbers, if any, were 11. Valmont Indus. Inc., 983 F.2d at 1042.
being assigned, when were those assignments occurring, 12. Chiuminatta, 145 F.3d at 1309.
and how did those assignments affect the course of each 13. See Odetics, Inc. v. Storage Tech Corp., 185 F.3d 1259, 1268
algorithms execution. Most arguably, the accused de- (Fed. Cir. 1999); Chiuminatta, 145 F.3d at 1309.
vice had a substantially different algorithmic structure 14. See Al-Site v.VSI Intl, Inc., 174 F.3d 1308, 1320-1321 (Fed.
and therefore did not infringe the Telnaes patent under Cir. 1999).
the doctrine of equivalents.The district court may have 15. See Gottschalk v. Benson, 409 U.S. 63 (1972) (The US
done the best it could under the circumstances. Supreme Court held that mathematical algorithms (not just
formulae) were non-patentable subject matter, effectively
Unfortunately, without a method for evaluating the al-
blocking the patenting of pure software and forcing patent
gorithms at issue that was accurate, complete, and di-
applicants to shift their focus to patenting mechanical de-
gestible, the district courts ability to discern the critical
vices and processes that happened to include computer pro-
differences was severely handicapped. The end result grams.). See also, Julie E. Cohen and Mark A. Lemley,Patent
was clear error in the district courts finding of struc- Scope and Innovation in the Software Industry, 89 Cal. L.
tural equivalents. The Federal Circuits decision to af- Rev. 1, 8 (Jan. 2001) (Cohen, Patent Scope); Bruce
firm the district courts finding of infringement cannot Abrahamson, Promoting Innovation in the Software
be reconciled with this conclusion. Industry: A First Principles Approach to Intellectual
Property Reform, 8 B.U.J. Sci.&Tech. L. 75, 81 (Winter
Conclusion 2002).
Existing software patents continue to mature and 16. In re Alapatt, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc).
new software patents continue to multiply. Absent 17. Id. at 1545.
modification of rules announced in WMS Gaming re- 18. Cohen, Patent Scope, at 10.

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19. Atkinson, The Devil is in the Details, at 7. Property Reform, 8 B.U.J. Sci.&Tech. L. 75, 87 (Winter
20. Bradley D. Baugh, WMS Gaming, Inc. v. International 2002).
Game Technology 15 Berkeley Tech. L.J. 109, 114 (2000), 29. See GTE Wireless, Inc. v. Qualcomm, Inc., 188 F. Supp. 2d
quoting Mark D. Janis,Whos Afraid of Functional Claims? 1201, 1210 (S.D. Cal. 2002) (The Federal Circuit [in WMS
Reforming the Patent Laws 112, 6 Jurisprudence, 15 Gaming] concluded the corresponding structure was the al-
Computer & High Tech. L.J. 231, 235 (1999) (Claims draft- gorithm disclosed in the written description portion of the
ed in means-plus-function [language] are especially preva- specification, not the claims.).
lent in patents on software-related inventions, where the 30. WMS Gaming, 184 F.3d at 1349.
format has been thought useful for complying with the sub- 31. Faroudja Laboratories, Inc. v. Dwin Electronics, Inc., 76 F.
ject matter eligibility requirement.). Supp. 2d 999, 1010 (N.D. Cal. 1999).
21. See, e.g., State Street Bank & Trust v. Signature Financial 32. Id.
Group, 149 F.3d 1368, 1374 (Fed. Cir. 1988), cert. denied, 525 33. See generally Sally Shlaer & Stephen J. Mellor, Object
U.S. 1093 (1999) (jettisoned the physicality requirement in Lifecycles: Modeling the World in States (1991).
favor of rule that business methods are patentable so long as 34. See generally id.
35. See, e.g., US Patent No. 5,193,056, figs. 5-11 & cols. 7-13 (is-
they produce a useful, concrete and tangible result).
sued Mar. 9, 1993) (at issue in State Street, 149 F.3d 1368);
22. More specifically, as to infringement, the Federal Circuit re-
US Patent No. 4,448,419, cols. 3-4. (issued May 15, 1984)
versed the holding of literal infringement because the func-
(Telnaes patent) (at issue in WMS Gaming, 184 F.3d 1339).
tion of the accused device was not the same as the function
36. See generally Shlaer & Mellor, supra n.33.
of the claimed device in all respects, see 184 F.3d at 1352,
37. Benghiat v. Itron, 169 F. Supp. 2d 1073. See supra, n.3.
but nonetheless affirmed the finding of infringement under 38. Id.
the doctrine of equivalents based on the further finding that 39. Id.
the differences between accused and claimed devices were 40. See Telnaes patent, fig. 6.
insubstantial, see id. at 1353-1354. 41. See WMS Gaming, 184 F.3d at 1349.
23. Baugh, supra n.20, at 117, which contains an excellent pres- 42. See Cris Kobryn,UML 2001: A Standardization Odyssey,
entation on the facts and technology at issue in WMS Communications of the ACM at 31 (Oct. 1999).
Gaming. 43. See id. at 37.
24. WMS Gaming, 184 F.3d at 1349. 44. See id. at 33-34.
25. See supra, n.3. 45. The order of functional execution in the accused device is
26. Allen Newell, Response: The Models are Broken, 47 U. described by the court in WMS Gaming. See WMS Gaming,
Pitt. L. Rev. 1023, 1028 (Summer 1986). 184 F.3d at 1344.
27. Id. 46. See id. at 1354.
28. Bruce Abrahamson,Promoting Innovation in the Software 47. See id. at 1351.
Industry: A First Principles Approach to Intellectual 48. See id. at 1354.

20 Intellectual Property & Technology Law Journal Volume 16 Number 4 April 2004