Article: October 2016: Patent Litigation Update

Federal Circuit Upholds Ruling That a Coined Term Rendered Functional Claims Indefinite. In Advanced Ground Information Systems, Inc. v. Life360, Inc., --- F.3d ---, No. 2015-1732 (Fed. Cir. Jul. 28, 2016) the United States Court of Appeals for the Federal Circuit upheld the invalidation of two patents based a failure to meet the definiteness requirements of 35 U.S.C. § 112. The AGIS decision explains how, under the evolving law of the Federal Circuit, the claims of a patent may be held indefinite based on the use of undefined coined terms—that is, terms not commonly used by persons of skill in the relevant art.

The plaintiff-patentee AGIS brought an infringement suit on two patents in the United States District Court for the Southern District of Florida. Generally speaking, the patents were directed to establishing a communications network for users of mobile devices. All of the asserted claims recited a “symbol generator,” which in the context of the claims is a component for generating symbols for display on mobile devices. For example, one patent described generating symbols on the users’ cellular phones to represent the location of other users.

The defendant, Life360, offered a two-step PRACTICE AREA NOTES 7 argument that the “symbol generator” term rendered the claims indefinite. First, the defendant argued this term invokes § 112, ¶ 6, which authorizes the use of means-plus-function claiming. (Section 112, ¶ 6 refers to the provision as set forth in the statute before the organizational amendments made by the Leahy-Smith America Invents Act.) Second, the defendant pointed to established Federal Circuit law that a computer implemented means-plus-function term requires that the specification disclose an algorithm for performing the function, on pain of failure to satisfy the § 112, ¶ 2 requirement of definiteness. See, e.g., Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

Agreeing with the district court that, on the first step, the claim term invokes § 112, ¶ 6, the Federal Circuit highlighted the changed standard for resolving this question established in Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Before that 2015 opinion, courts applied a strong presumption that where a claim lacks the special phrase “means for,” it is not a means-and-function claim intended to invoke § 112, ¶ 6. In Williamson, the en banc Federal Circuit eliminated the “strong” presumption and replaced it with a rebuttable presumption—one that a challenger may overcome by a preponderance of the evidence. The standard for determining if the claims fall outside of the provisions of Paragraph 6 is “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.” Id. at 1349. If the answer is “yes”, then the claim term is not a means-and-function term.

Plaintiff-patentee AGIS argued in the district court that it had presented unrebutted evidence from its expert that persons of ordinary skill in the art would have understood the claimed “symbol generator” to have a sufficiently definite meaning as the name for s tructure. However, the Federal Circuit relied on the admission, by the same expert, that the term “symbol generator” was a term coined for the purposes of the patents-in-suit. Reasoning that a coined term is by definition not commonly used by persons of skill in the relevant art, the Federal Circuit concluded that it would therefore not be understood by those persons to have a sufficiently definite meaning as the name for structure. It then went on to note that “symbol generator” by itself does not identify any structure—i.e., it merely states a function. Accordingly, the claims invoked § 112, ¶ 6, and the appellate court affirmed that the first step was met. Notably, the opinion did not scrutinize whether anything in the specification amounted to a definition of this coined term, suggesting that neither party presented such a contention.

At the second step, the Federal Circuit relied on an established line of cases that place very specific demands on the structure corresponding to a computer implemented means-plus-function term. For such terms, the specification must disclose an algorithm for performing the function. E.g., Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Although there is flexibility in how a patentee may disclose an algorithm, including by prose description, the failure to identify a corresponding algorithm runs afoul of the statutory requirement to “distinctly claim[ ]” what the inventor regards as the invention. 35 U.S.C. § 112, ¶ 2.

Applying these cases, the Federal Circuit found that it was not enough that one of the patents described generating symbols via map and location databases. The Court agreed that this disclosure merely addressed the medium through which the symbols are generated. As is common in cases following Aristocrat, a failure to explain how a computer would carry out the claimed function proved fatal under § 112, ¶ 2, rendering the claims invalid. Indeed, AGIS explicitly quotes the rationale from Aristocrat that functional claim language cannot be supported merely with a general purpose computer, as that would effectively permit pure functional claiming.

In light of AGIS, parties will want to carefully consider the role of expert testimony in a potential indefiniteness challenge. For the type of two-step challenge presented in the AGIS case, the Federal Circuit acknowledged the relevance of expert testimony, but found it wanting in particulars. Moreover, in the context of a dispute over whether claim terms would be understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure, or whether the claim terms would be understood as coined terms, courts in other cases may look to intrinsic evidence of the specification. Such intrinsic evidence is generally regarded as reliable evidence. Indeed, under the current dual standard for appellate review, legal determinations relevant to indefiniteness, including the assessment of intrinsic evidence, are reviewed de novo, whereas underlying findings of fact based on extrinsic evidence are reviewed for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 842 (2015). In AGIS, the critical role of expert testimony in the dispute triggered clear-error review of the district court’s opinion, which was ultimately upheld in its entirety.