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FEDERAL CIRCUIT LIMITS ENFORCEABILITY OF “COINED” PATENT CLAIM TERMS

Tuesday, August 9, 2016

The Webb Law Firm has obtained a victory in the United States Court of Appeals for the Federal Circuit for Life360, Inc., a San Francisco based start-up that makes a mobile application to provide location and communication services for families. The appellate decision marks the end of the liability portion of the litigation brought by Advanced Ground Information Systems, Inc. (“AGIS”) in 2014, which culminated in a jury trial in March 2015.

The Federal Circuit agreed with the district court’s ruling that the term “symbol generator,” coined for use in the asserted patents, was indefinite. In a precedential opinion, the appellate court affirmed Life360’s district court victory by interpreting the claim term “symbol generator” to be recited in terms of its function, rather than a particular structure. Because the patent specifications failed to disclose a process or operative algorithm for performing the “symbol generator” function, instead “only address[ing] the medium through which the symbols are generated," the claims including this coined term were held invalid.

The Federal Circuit’s opinion cites the testimony of Dr. Benjamin Goldberg, an expert witness offered by AGIS, which indicated that the term “symbol generator” is “a term coined for the purpose of the patents-in-suit.” The court rejected AGIS’s argument that the terms “symbol” and “generator” were separate terms of art and therefore their combination was understandable, finding that “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).” Kent E. Baldauf Jr., a partner at The Webb Law Firm representing Life360, was pleased that “Judge Middlebrooks and the Federal Circuit reached the only reasonable conclusion possible, given the patents disclose nothing more than a desired function.”

The Webb Law Firm continues to represent Life360 at the Federal Circuit in connection with Life360’s award of its attorneys’ fees. After obtaining a jury verdict of non-infringement for other asserted claims, the district court found the litigation to be “exceptional” and ordered AGIS to pay Life360 almost $700,000 in attorneys’ fees. AGIS also appealed that ruling to the Federal Circuit, and oral argument is expected to take place within the next several months. Articles were also published by Law360 and Patently-O regarding the decision, which are available on their websites.