On July 28, 2016, the Federal Circuit issued its opinion in Advanced Ground Information Systems v. Life360, Inc., affirming the district court’s decision that the asserted patent claims are indefinite. This opinion is notable because the Federal Circuit, once again, determined that the limitations of means-plus-function claiming under 35 U.S.C. § 112, ¶ 6 should govern claim language even though it does not include the word “means.”
Last year, an en banc court of the Federal Circuit reminded us in Williamson v. Citrix that § 112, ¶ 6 may still apply even when “means” is not used when claiming in functional, rather than structural, terms. 792 F.3d 1339 (Fed. Cir. 2015). The rebuttable presumption against invoking § 112, ¶ 6 in the absence of that word can be overcome “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.” Williamson, 792 F.3d at 1348 (citation omitted). “The standard 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.
In this new Advanced Ground Information Systems decision, the Court considered the term “symbol generator.” It applied § 112, ¶ 6 because the term “fails to describe a sufficient structure and otherwise recites abstract elements ‘for’ causing actions, … or elements ‘that can’ perform functions.” Slip op. at 9.
The Court pointed to the patentee’s expert’s admission that the term “symbol generator” is a term coined for the purposes of the patents-in-suit. Slip op. at 10. “Symbol generator” was not used in “common parlance or by persons of skill in the pertinent art to designate structure.” Id. (quoting Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir. 2004)).
Importantly, the Court recognized that it did not matter that the terms “symbol” and “generator,” when considered individually, are known to those skilled in the art. Id. The Court explained:
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).
Id. (emphasis added).
After determining that § 112, ¶ 6 applies, the Court found the the disclosed structure was merely a computer or microprocessor programmed to carry out an algorithm. Slip. op. at 12. But where computer-implemented functions are at issue, the specification must “disclose an algorithm for performing the claimed function.” Id. (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)). The patent-in-suit in this case did not describe an “operative algorithm” for the claim elements reciting “symbol generator.” Id. at 13. The Court therefore found the asserted claims indefinite.
The Court’s holding is one of several where a coined or “nonce” term does not identify a structure by its function and invokes § 112, ¶ 6 even though it does not use the word “means”:
“colorant selection mechanism”— Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)
“program recognition device” and “program loading device”—Robert Bosch, LLC v. Snap–On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014)
“distributed learning control module”—Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir. 2015) (en banc)
“compliance mechanism”—Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)
Patents that employ functional claiming even without using the words “means” will likely encounter greater scrutiny in the courts in light of this growing line of cases. That scrutiny is becoming more prominent under Section 112 jurisprudence, but is also apparent in the growing body Section 101 case law. The Court commented in the recent Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016) decision, in affirming a finding that a software patent is ineligible under § 101:
The district court phrased its point only by reference to claims so result-focused, so functional, as to effectively cover any solution to an identified problem…. Indeed, the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions.
Thus, whether countenanced as an issue of eligibility or an issue of written description, practitioners should be aware of a trend against undefined coined terms and the liberal use of functional terms in recent decades to delineate patent rights.
David Conrad is a Principal attorney in the Dallas office of Fish & Richardson. He provides legal services to clients in matters relating to business litigation, patent litigation, and trade secret litigation. Mr. Conrad’s clients benefit from his in-depth knowledge of...