United States: Section 112 Again Shows Teeth

In Advanced Ground Information Systems, Inc. v. Life360, Inc., No. 2015-1732 (Fed. Cir. July 28, 2016), the Federal Circuit continued in the vein of Williamson v. Citrix Online, LLC1 in affirming a district court's finding claims with a functional recitation, but insufficient structure to support that recited function, as invoking 35 U.S.C. § 112, ¶ 6, and therefore subjecting the element to construction as a means-plus-function recitation. After this construction, because sufficient structure for performing the recited function was absent in the disclosure, the claims where deemed to be indefinite under § 112, ¶ 2, and therefore invalid.

Advanced Ground Information Systems, Inc. (AGIS), asserted two patents against Life360, claiming infringement. While the specifications of the patents-in-suit differ from one another, the patents-in-suit both relate to methods, devices, and systems for establishing a communication network for users (referred to as "participants") of mobile devices, such as cellular phones. See Advanced Ground, slip op. at 2-3. Life360 markets a smartphone app that, among other functionality, allows members of groups to see other group members located on a map.

The asserted claims include a "symbol generator" that generates symbols representing each participant on the display of a phone. A representative recitation from one patent reads a "symbol generator in [a central processing unit ('CPU')] that can generate symbols that represent each of the participants' cell phones in the communication network on the display screen." Id. at 4 (alteration in original) (citation omitted). From the second patent, a representative recitation reads a "cellular phone for use in a communication network for a plurality of participants comprising . . . a symbol generator connected to [a] CPU and [a] database for generating symbols on [a] touch screen display screen." Id. at 4-5 (alterations in original) (citation omitted). The asserted claims also recite that the cellular phone comprises "CPU Software."  Id. at 5 (citation omitted). One patent recited "CPU software for selectively polling other participants with a cellular phone"; the other recited "CPU software that causes the exchange of data with other participants with a cellular phone."  Id. (citations omitted).

The court reasoned on appeal that if it found that the "symbol generator" limitation resulted in indefiniteness, it need not reach the question of whether the "CPU software" limitation was also defective. Focusing on the "symbol generator" limitation, the court noted that the term did not have an excepted meaning in the art. Although "symbol" and "generator" were each known terms in the field of computer science, the combination did not point to a generally accepted structure. Id. at 9. While AGIS's expert testified that one of ordinary skill in the art would recognize it, the term "symbol generator" was also admitted as having been coined by the applicant for the patent specification. Id. at 9-10. Having no recognized structural meaning, the court reasoned that the term must be functional, referring to the process of generating a symbol for the claimed combination. Id. at 10.

Having found that the functional recitation was not supported in the claim by recited structure capable of supporting the recited function, the court concluded that the patentee intended to invoke 35 U.S.C
§ 112. The court noted that the absence of the word "means" in the claims raised a presumption that
§ 112, ¶ 6, did not apply, but was also quick to point out that the omission of the word "means" was not dispositive. Id. In an analysis referring to Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014), the court next turned to the specification to identify structure capable of supporting the recited function, under settled § 112, ¶ 6 precedent. Advanced Ground, slip op. at 11. By this point in the decision, it was clear that the horse was already out of the barn.

Citing to Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009), the court restated the proposition that if a patentee "employs means-plus-function language in a claim, [the patentee] must set forth in the specification an adequate disclosure showing what is meant by that language," and if "the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention [under § 112, ¶ 2], which renders the claim invalid for indefiniteness." Advanced Ground, slip op. at 11-12 (quoting Blackboard, 574 F.3d at 1382). The decision next cited to numerous precedents which held that in a means-plus-function claim in which the disclosed structure is a computer or microprocessor programmed to carry out an algorithm, as was the case here, the disclosed structure is deemed to be a special purpose computer programmed to perform the disclosed algorithm, which in turn requires that the specification express the algorithm in some understandable terms (e.g., as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.2  Id. at 12.

Finding no such disclosure of sufficient structure in the patent specification, the court concluded that the claims were indefinite under 35 U.S.C. § 112, ¶ 2. This decision essentially followed the same pattern as Robert Bosch and Williamson, finding that a functional recitation not containing the signal word "means" was nevertheless a means-plus-function recitation—with similarly fatal results. 
Id.
at 13.

Patent drafters and prosecutors employing best practices will provide adequate structure for claims having functional recitations, as well as definitions for terms that are not terms of art. In software and computer-related inventions, the requirement to provide adequate disclosure for algorithms can be met using any of several devices, including formulas, flowcharts, or even prose. The Federal Circuit here admonished that claiming a result without the structural means to accomplish it amounts to prohibited "pure functional claiming." Id. (quoting Aristocrat Techs., 521 F.3d at 1333).

Footnotes

1 792 F.3d 1339 (Fed. Cir. 2015) (en banc).  See here. hyperlink to (http://www.finnegan.com/files/upload/Newsletters/Full_Disclosure/2015/June/FullDisclosure_June15_1.html).

2 Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).

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