Docket No. 2015-1732
MOORE, MAYER, WALLACH
July 28, 2016
Brief Summary: DC finding that “symbol generator” invoked 112/6 and was indefinite affirmed (computer-implemented functions require disclosure of an algorithm).
Summary: AGIS appealed DC decision that certain claims of US 7,031,728 and 7,672,681 relating to mobile device communications invoke 35 USC 112, sixth paragraph (“112/6”) (means-plus-function) and are indefinite. AGIS alleged Life360’s smartphone software application infringed the disputed claims and Life360 successfully alleged the claim terms “symbol generator” and “CPU software” were means-plus-function terms and indefinite for failing to disclose adequate structure. The FC opinion explained that the means-plus-function analysis requires determining whether a term is in means-plus-function format and then “attempt[ing] to construe the disputed claim term by identifying the corresponding structure, material, or acts described in the specification to which the term will be limited” (Robert Bosch, FC 2014; O.I. Corp., FC 1997; Med. Instrumentation, FC 2003 (“the patentee…is…attempting to claim in functional terms unbounded by any reference to structure in the specification”)). And if the claim includes the word “means” it is presumed to be in means-plus-function format unless “the claim itself recites sufficient structure to perform the claimed function” (Envirco, FC 2000). If the claim does not include the word “means”, it is presumed not to be in means-plus-function format but a challenger can establish by a preponderance of the evidence that the claim term does not “recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function” (Williamson, FC 2015 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name for the structure.”); Apex, FC 2003). The FC panel agreed with the DC that the term “symbol generator” invoked 112/6 “because it fails to describe a sufficient structure and otherwise recites abstract elements ‘for’ causing actions…or elements ‘that can’ perform functions” and “is not used ‘in common parlance or by persons of skill in the pertinent art to designate structure,’ such that it connotes sufficient structure to avoid the application of” 112/6 (“”[i]rrespective of whether the terms ‘symbol’ and ‘generator’ are terms of art in computer science, 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 begin performed”) (Lighting World, FC 2004 (overruled on other grounds by Williamson)). The FC also found no error in the DC’s conclusion that the “symbol generator” was indefinite because the specification “fails to [disclose] an ‘algorithm’ or description as to how those symbols are actually ‘generated’” (Aristocrat, FC 2008; NetMoney, FC 2008 (“In the case of computer-implemented functions, we require that the specification ‘disclose an algorithm for performing the claimed function.’”; Finisar, FC 2008 (“The specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose…as a flow chart, or in any other manner that provides sufficient structure”)). With its conclusion regarding “symbol generator”, the FC panel did not reach the DC decision regarding “CPU software”. The DC decision was affirmed.