US Court of Appeals for the Federal Circuit Affirms Claim Indefiniteness of Coined Terms

On July 28, 2016, in AGIS v Life360, the US Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s finding of indefiniteness using a strict means-plus-function approach to claim construction, thus finding AGIS’s claims to be invalid. According to 35 USC § 112, when a claim element is expressed as a means for performing a function and the patent specification does not disclose corresponding structure, material, or acts for performing the specified function, the claim shall be found invalid for indefiniteness.

At issue were two patents relating to methods of establishing cellular user communication network on mobile devices. The asserted claims specified a “symbol generator” used to produce symbols for tracking mobile phone user location. 

In a two-step means-plus-function analysis, the CAFC first found the term “symbol generator” to claim a means for performing a specified function, in a matter analogous to a “means for generating symbols”, thus falling within the scope of 35 USC § 112. Furthermore, the CAFC noted that the claimed term was coined for patent purposes and cannot be said to be known by persons of ordinary skill in the art.

In the second step of the analysis, the CAFC concluded that the claimed term “symbol generator” is a computer-implemented function and as such requires disclosure of an algorithm for performing the function. In this case, a corresponding adequate structure for the claimed function was not properly identified in the patent specification, thus rendering the claims indefinite.

Summary By: Anna Troshchynsky