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The Federal Circuit affirmed the district court’s indefiniteness determination. The district court had found that the terms “symbol generator” and “CPU software” in the asserted claims of U.S. Patent Nos. 7,031,728 and 7,672,681 invoked 35 U.S.C. § 112, ¶ 6, and were indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit, without deciding whether claim term “CPU software” was indefinite, affirmed the district court’s finding that the term “symbol generator” was indefinite. 

In its two-step analysis, the Federal Circuit first determined that the term “symbol generator,” invoked 35 U.S.C. § 112, ¶ 6—even in the absence of the word “means,” which typically raises a rebuttable presumption that the term is not a means-plus-function term—because “by itself, [the term] does not identify a structure by its functions, [] nor do the asserted claims suggest that the term ‘symbol generator’ connotes a definite structure.” The Federal Circuit noted that the patentee’s expert testified that “the term ‘symbol generator’ is a term coined for the purposes of the patents-in-suit,” and “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.”

Next, having determined that the claim term “symbol generator” was a means-plus-function term, the Federal Circuit found the term to be indefinite under 35 U.S.C. § 112, ¶ 2, “because the specifications of the patents-in-suit do not disclose sufficient structure” for the term. The Federal Circuit pointed out that “[i]n the case of a computer-implemented functions, [] the specification [must] disclose an algorithm for performing the claimed function. 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.”  

Advanced Ground Information Systems, Inc. v. Life260, Inc., Case No. 2015-1732 (July 28, 2016); Opinion by: Wallach, joined by Moore and Mayer; Appealed From: United States District Court for the Southern District of Florida, Middlebrooks, J.  Read the full opinion here.

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