July 28, 2016

Patent Drafters: Leaving Coining to the Mint

By Bryan K. Wheelock, Principal

In Advanced Ground Information Systems, Inc. v. Life360, Inc., [2015-1732] (July 28, 2016) the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent Nos. 7,031,728 and 7,672,681 for indefiniteness.

At issue was the term “symbol generator” in the claims in a cellular communication system.  The Federal Circuit agreed that “symbol generator” invoked 35 U.S.C. § 112, ¶ 6, but were indefinite under 35 U.S.C. § 112, ¶ 2.

The Federal Circuit said that the failure to use the word “means” creates a rebuttable presumption that §112, ¶ 6 does not apply.  Whether §112, ¶ 6, applies depends upon whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  The Federal Circuit said that the term “symbol generator” invokes §112, ¶ 6 because it fails to describe a sufficient structure and otherwise recites abstract elements “for” causing actions, or elements “that can” perform functions.

The Federal Circuit noted that the patentee’s expert testified that the term “symbol generator” is a term coined for the purposes of the patents-in-suit, and that it was not used in “common parlance or by persons of skill in the pertinent art to designate structure.”  While the expert testified that “symbol” and “generator” are well known terms, the Federal Circuit found that the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols).  Finally, the Federal Circuit found that the claim term “symbol generator,” by itself, does not identify a structure by its function.

Having found that §112, ¶ 6, applies, the specification must disclose the corresponding structure or the claim in indefinite.  However, the Federal Circuit agreed with the district court that the the specifications of the patents-in-suit did not disclose an operative algorithm for the claim elements reciting “symbol generator.”  The function of generating symbols must be performed by some component of the patents-in-suit; however, the Federal Circuit said that the patents-in-suit do not describe this component.