ADVANCED GROUND INFORMATION SYSTEMS [AGIS] loses at CAFC on 112(6), 112(2) issues

Advanced Ground Information Systems, Inc. (“AGIS”)
appeals the decision of the United States District Court
for the Southern District of Florida in Advanced Ground
Information Systems, Inc. v. Life360, Inc., No. 14-cv-80651
(S.D. Fla. Nov. 21, 2014) (J.A. 2–37), which found that
claims 3 and 10 of U.S. Patent No. 7,031,728 (“the ’728
patent”) and claims 5 and 9 of U.S. Patent No. 7,672,681
(“the ’681 patent”) (together, the “patents-in-suit”) invoke
35 U.S.C. § 112, ¶ 6, and that the claims are indefinite
under 35 U.S.C. § 112, ¶ 2 (2006).1 Although the district
court found these claims indefinite, it did not address the
issue of invalidity because Appellee, Life360, Inc.,
(“Life360”) did not request a finding of invalidity. The
parties subsequently stipulated that these claims were
invalid for indefiniteness, see J.A. 857, and the court
entered its Final Judgment on May 12, 2015, see J.A. 1.
For the reasons articulated below, we affirm the district
court’s decision that the claims are indefinite, and accordingly
conclude that the asserted claims are invalid.



The technology


The ’728 patent describes a cellular communication
system that allows multiple cellular phone users to monitor
others’ locations and statuses via visual display of
such information on a map. ’728 patent, Abstract.
(...)
The ’681 patent is a continuation-in-part of the ’728
patent. It describes how “a designated administrator
using a personal computer (PC) or other input device can
reprogram all user and network participants’ cell phone
devices to change, modify[,] or create new virtual switch
names and new symbols for a different operating environment.”




Legal issues:


Our analysis proceeds in two steps. First, we address
whether “symbol generator” in the asserted claims is in
means-plus-function form pursuant to 35 U.S.C. § 112,
¶ 6. See Robert Bosch, LLC v. Snap–On Inc., 769 F.3d
1094, 1097 (Fed. Cir. 2014). If we find that the relevant
claim terms recite a means-plus-function limitation, we
proceed to our second inquiry and “attempt 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.” Id. (internal quotation
marks and citation omitted); see also O.I. Corp. v. Tekmar
Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997)

(...)

The district court held that “symbol generator” and
“CPU software” in claims 3 and 10 of the ’728 patent and
claims 5 and 9 of the ’681 patent invoked 35 U.S.C. § 112,
¶ 6, but were indefinite under 35 U.S.C. § 112, ¶ 2.
“Symbol generator” appears in all of the asserted claims.
Thus, if we find that claim term indefinite under 35
U.S.C. § 112, ¶ 2, we need not independently address
whether the claim term “CPU software” also renders clam
10 of the ’728 patent and claim 9 of the ’681 patent invalid
for indefiniteness.
The district court’s construction of patent claims
based on evidence intrinsic to the patent, including any
finding that the claim language invokes 35 U.S.C. § 112,
¶ 6, is reviewed de novo as a question of law. See Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed.
Cir. 2015) (en banc) (citation omitted). In construing
patent claims, if the district court makes underlying
findings of fact based on extrinsic evidence, such findings
are reviewed for clear error. Id. “Clear error only exists if
we are left with a definite and firm conviction that a
mistake has been committed.” Venture Indus. Corp. v.
Autoliv ASP, Inc., 457 F.3d 1322, 1331 (Fed. Cir. 2006)

(...)

“[T]he failure to use the word ‘means’ also creates a
rebuttable presumption—this time that § 112, para. 6
does not apply.” Williamson, 792 F.3d at 1348 (citation
omitted). However, “if the challenger demonstrates that
the claim term fails to recite sufficiently definite structure
or else recites function without reciting sufficient structure
for performing that function,” this presumption may
be rebutted.

(...)

Here, although the asserted claims do not include the
word “means,” the district court determined that AGIS
intended to invoke § 112, ¶ 6. See J.A. 10–11; see also
’728 patent col. 12 l. 52–col. 13 l. 13 (claim 3), col. 14 ll.
27–61 (claim 10); ’681 patent col. 12 l. 52–col. 13 l. 18
(claim 5), col. 13 l. 44–col. 14 l. 27 (claim 9). According to
the district court, “[a] plain reading of the term in context
of the relevant claim language suggests the term ‘symbol
generator’ is analogous to a ‘means for generating symbols’
because the term is simply a description of the
function performed.” J.A. 10–11 (citation omitted).




The CAFC found that 112(6) applied:



However, contrary to AGIS’s contention,
Dr. Goldberg testified that the term “symbol generator” is
a term coined for the purposes of the patents-in-suit. See
J.A. 798. The term 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 35 U.S.C. § 112, ¶ 6. Lighting World,
Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359
(Fed. Cir. 2004), overruled on other grounds by Williamson,
792 F.3d at 1348–49.

We see no clear error in the district court’s findings
regarding Dr. Goldberg’s testimony. Dr. Goldberg’s
testimony that the terms “symbol” and “generator” are
known within the field of computer science is not dispositive
and does not require us to find that 35 U.S.C. § 112,
¶ 6 does not apply.

(...)

Irrespective 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 being performed (i.e., the generation of symbols).
See, e.g., ’728 patent col. 3 ll. 44–46 (“Each cellular
phone/[Personal Digital Assistant (‘PDA’)/[Global Positioning
System (‘GPS’)]” is identified on the display of
other phone systems by a symbol that is generated to
indicate its identity.” (emphasis added)); see also ’681
patent col. 7 ll. 14–17 (“Each cellular phone device is
identified on the map display of the other participant/user
cell phone devices by a display symbol that is generated on
each user cell phone device display to indicate each user’s
identity.” (emphasis added)).

(...)
Finally, the claim term “symbol generator,” by itself,
does not identify a structure by its function, cf. Personalized
Media Commc’ns v. ITC, 161 F.3d 696, 705 (Fed. Cir.
1998) (stating that the claim term “digital detector” does
not invoke § 112, ¶ 6 because “[e]ven though the term
‘detector’ does not specifically evoke a particular structure,
it does convey to one knowledgeable in the art a
variety of structures known as ‘detectors’”), nor do the
asserted claims suggest that the term “symbol generator”
connotes a definite structure, see Media Rights Techs.,
Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
Cir. 2015) (finding that the term “compliance mechanism”
invokes § 112, ¶ 6, because the asserted claims “simply
state that the ‘compliance mechanism’ can perform various
functions” (emphasis added)).

(...)

The specifications of the patents-in-suit do 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 patents-in-suit do not describe
this component. Although the specification of the
’728 patent suggests that these symbols are generated via
“a map database and a database of geographically referenced
fixed locations . . . with a specified latitude and
longitude[,] . . . [and] [a] database with the constantly
updated GPS location,”’ 728 patent col. 3 ll. 35–41, this
only addresses the medium through which the symbols
are generated. A patentee cannot claim a means for
performing a specific function and subsequently disclose a
“general purpose computer as the structure designed to
perform that function” because this “amounts to pure
functional claiming.” Aristocrat Techs., 521 F.3d at 1333.
Accordingly, because the specifications of the patents-insuit
do not disclose sufficient structure for the “symbol
generator” function and the asserted claims include this
term, the asserted claims are indefinite under 35 U.S.C. §
112, ¶ 2.