Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 1 of 36 PageID #: 7198
`
`Exhibit 6
`
`

`

`
`
`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 2 of 36 PageID #: 7199
`Case: 15-1732 Document: 39 Page: 1 Filed: 10/27/2015
`Appeal No. 2015-1732
`United States Court of Appeals
`for the
`Federal Circuit
`
`
`ADVANCED GROUND INFORMATION SYSTEMS, INC.,
`
`– v. –
`
`LIFE360, INC.,
`
`Plaintiff-Appellant,
`
`Defendant-Appellee.
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA, CASE NO.
`9:14-CV-80651-DMM, JUDGE DONALD M. MIDDLEBROOKS
`
`REPLY BRIEF FOR PLAINTIFF-APPELLANT
`ADVANCED GROUND INFORMATION SYSTEMS, INC.
`
`
`
`
`
`
`
`MARK A. HANNEMANN
`GEORGE E. BADENOCH
`MARK A. CHAPMAN
`THOMAS R. MAKIN
`ROSE CORDERO PREY
`VINCENT J. RUBINO
`ALESSANDRA CARCATERRA
`KENYON & KENYON LLP
`One Broadway
`New York, New York 10004
`(212) 425-7200
`
`Attorneys for Plaintiff-
`Appellant Advanced Ground
`Information Systems, Inc.
`
`October 27, 2015
`
`
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 3 of 36 PageID #: 7200
`Case: 15-1732 Document: 39 Page: 2 Filed: 10/27/2015
`
`
`
`CERTIFICATE OF INTEREST
`
`Counsel for Plaintiff-Appellant Advanced Ground Information Systems, Inc.
`certifies the following:
`
`
`is:
`
`1.
`
`
`
`The full name of every party or amicus curiae represented by counsel
`
`Advanced Ground Information Systems, Inc.
`
`The name of the real party in interest represented by counsel is:
`
`2.
`
`
`
`
`None.
`
`All parent corporations and any publicly held companies that own 10
`3.
`percent or more of the stock of the party or amicus curiae represented by counsel
`are:
`
`Advanced Ground Information Systems, Inc. does not have any parent
`corporations. No publicly held company owns 10 percent or more of
`its stock.
`
`The names of all law firms and the partners or associates that
`4.
`appeared for the party represented by me in the trial court or agency or are
`expected to appear in this court are:
`
`
`George E. Badenoch, Mark A. Hannemann, Mark A. Chapman,
`Thomas R. Makin, Rose Cordero Prey, Vincent J. Rubino, and
`Alessandra Carcaterra of KENYON & KENYON LLP.
`
`Ury Fischer and Adam Diamond of LOTT & FISCHER, PL.
`
`
`Dated: October 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/s/ Mark A. Hannemann
`Mark A. Hannemann
`KENYON & KENYON LLP
`
`
`
`i
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 4 of 36 PageID #: 7201
`Case: 15-1732 Document: 39 Page: 3 Filed: 10/27/2015
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`CERTIFICATE OF INTEREST ................................................................................ i 
`
`TABLE OF AUTHORITIES .................................................................................. iii 
`
`INTRODUCTION .................................................................................................... 1 
`
`ARGUMENT ............................................................................................................ 3 
`
`I. 
`
`The “Symbol Generator” Elements Refer to a Well-Known Class of
`Standard Software Modules and Did Not Invoke § 112, ¶ 6 .......................... 3 
`
`A. 
`
`B. 
`
`C. 
`
`The District Court Erred When It Found that AGIS’s Expert
`Admitted that “Symbol Generator” Was a “Coined” Term With
`No Clear Meaning ................................................................................ 6 
`The District Court Erred When It Misconstrued the Testimony
`of AGIS’s Expert As Being Directed Only to Whether Those
`Skilled In the Art Could Create Software .......................................... 10 
`The District Court Erred When It Failed to Require Life360 to
`Rebut the Presumption that § 112, ¶ 6 Did Not Apply to the
`“Symbol Generator” Elements ........................................................... 14 
`The Two “CPU Software” Elements Refer to Well-Known Classes of
`Standard Software Modules and Did Not Invoke § 112, ¶ 6 ........................ 16 
`
`II. 
`
`III. 
`
`A. 
`
`The District Court Erred When It Misconstrued the Testimony
`of AGIS’s Expert As Being Directed Only to Whether Those
`Skilled In the Art Could Create Software .......................................... 20 
`The District Court Erred When It Focused on the Term “CPU
`Software” In Isolation ........................................................................ 23 
`§ 112, ¶ 6 Should Be Invoked Only If a Claim Element Uses the Term
`“Means” ........................................................................................................ 24 
`
`B. 
`
`CONCLUSION ....................................................................................................... 27 
`
`
`
`
`
`
`
`ii
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 5 of 36 PageID #: 7202
`Case: 15-1732 Document: 39 Page: 4 Filed: 10/27/2015
`
`
`
`TABLE OF AUTHORITIES
`
`Cases 
`Cole v. Kimberly-Clark Corp.,
`102 F.3d 524 (Fed. Cir. 1996) ....................................................................... 26
`
`Page(s)
`
`Cooper Techs. Co. v. Dudas,
`536 F.3d 1330 (Fed. Cir. 2008) ..................................................................... 26
`
`Duratech Indus. Int’l, Inc. v. Bridgeview Mfg., Inc.,
`292 F. App’x. 931 (Fed. Cir. 2008) ................................................................. 8
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722 (2002)....................................................................................... 27
`
`Function Media, LLC v. Google, Inc.,
`708 F.3d 1310 (Fed. Cir. 2013) .............................................................. 12, 22
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996) ................................................................ 25, 26
`
`Linear Technology Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) .............................................................. 14, 15
`
`Mas-Hamilton Grp. v. LaGard, Inc.,
`156 F.3d 1206 (Fed. Cir. 1998) ....................................................................... 9
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015) ....................................................................... 9
`
`Merck & Co., Inc. v. Kessler,
`80 F.3d 1543 (Fed. Cir. 1996) ....................................................................... 26
`
`Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n,
`161 F.3d 696 (Fed. Cir. 1998) ......................................................................... 8
`
`Raytheon Co. v. Roper Corp.,
`724 F.2d 951 (Fed. Cir. 1983) ....................................................................... 26
`
`Williamson v. Citrix Online LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................. passim
`
`
`
`iii
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 6 of 36 PageID #: 7203
`Case: 15-1732 Document: 39 Page: 5 Filed: 10/27/2015
`
`
`
`Statutes 
`35 U.S.C. § 112, ¶ 6 ......................................................................................... passim
`
`
`
`Other Authorities 
`
`1162 O.G. 59 ............................................................................................................ 26
`
`M.P.E.P. § 2181(II)(B) (9th ed. Mar. 2014) ............................................................ 22
`
`
`
`
`
`
`
`iv
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 7 of 36 PageID #: 7204
`Case: 15-1732 Document: 39 Page: 6 Filed: 10/27/2015
`
`INTRODUCTION
`
`As AGIS explained in its opening brief, the judgment that the asserted
`
`system and device claims are indefinite should be reversed because the district
`
`court erred when it concluded that the “symbol generator” and “CPU software”
`
`elements invoked § 112, ¶ 6.
`
`Life360 introduced no evidence to meet its burden of rebutting the
`
`presumption that § 112, ¶ 6 did not apply. And the unrebutted testimony of
`
`AGIS’s technical expert, Benjamin Goldberg, Ph.D., a professor of computer
`
`science, showed that those skilled in the art would have understood each of these
`
`claim elements to refer to a well-known, specific class of structures, namely, a
`
`well-known class of existing, standard software modules that manufacturers
`
`provide for every device to perform the very basic and simple routines at issue.
`
`Specifically, Dr. Goldberg explained that the “symbol generator” elements refer to
`
`well-known and existing software modules on every device that select a symbol
`
`from a library and display it at an x-y position on the screen. He also explained
`
`that the two “CPU software” elements refer to well-known and existing software
`
`modules on every device that poll other phones in a network, and exchange data
`
`with other phones, respectively. In other words, these claim elements refer to well-
`
`known, existing software modules for performing very basic tasks, for which it
`
`was plainly unnecessary to describe an algorithm in the specification. Because the
`
`
`
`1
`
`
`
`
`
`

`

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`
`
`
`evidence that these claim elements connoted structure to those skilled in the art
`
`was unrebutted, the district court’s findings that they did not connote structure
`
`were clearly erroneous, and the court’s conclusion that § 112, ¶ 6 applied should be
`
`reversed.
`
`As explained below, Life360 responds primarily by parroting the district
`
`court’s erroneous findings and analysis. For example, Life360 selectively quotes
`
`Dr. Goldberg’s testimony to try to support the district court’s erroneous finding
`
`that he admitted that “symbol generator” is a “coined” term with “no clear
`
`meaning.” But when Dr. Goldberg’s testimony is read in context it is clear that he
`
`said no such thing. Life360 also tries to support the district court’s finding that Dr.
`
`Goldberg merely testified that those skilled in the art could create the software,
`
`even though he actually testified that the software is standard software that already
`
`exists on every device and is well-known. Life360 does not dispute that Dr.
`
`Goldberg is an expert in this field. When his actual testimony is properly
`
`considered, it is clear that the district court erred when it found that the “symbol
`
`generator” and “CPU software” elements invoked § 112, ¶ 6.1
`
`
`1 Life360 also makes one peripheral point that warrants a brief response. Life360
`accuses AGIS of misrepresenting Life360’s non-infringement arguments for the
`method claims asserted at trial (which are not at issue in this appeal) as limited to
`two arguments when Life360 made other non-infringement arguments. Life360
`Br. at 9-10. But as AGIS explained (AGIS Br. at 3-5, 9-10), and as Life360’s
`JMOL motion (A2900-15, cited at Life360 Br. at 10) confirms, Life360’s two
`
`
`
`2
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 9 of 36 PageID #: 7206
`Case: 15-1732 Document: 39 Page: 8 Filed: 10/27/2015
`
`
`
`ARGUMENT
`
`I.
`
`The “Symbol Generator” Elements Refer to a Well-Known Class of
`Standard Software Modules and Did Not Invoke § 112, ¶ 6
`
`As AGIS explained (AGIS Br. at 25-34), the district court erred when it
`
`concluded that the “symbol generator” elements in claims 3 and 10 of the ’728
`
`patent and claims 5 and 9 of the ’681 patent invoked § 112, ¶ 6. Life360 did not
`
`meet its burden of rebutting the presumption that § 112, ¶ 6 did not apply, because
`
`the unrebutted testimony of Dr. Goldberg showed that those skilled in the art
`
`would have understood the “symbol generator” elements to refer to a well-known,
`
`specific class of structures, namely, a well-known class of existing, standard
`
`software modules routinely used to display symbols on a screen. A549, ¶ 21;
`
`A735, 23:23-24:13; A798-801; A812-13. Dr. Goldberg testified as follows in his
`
`declaration:
`
`[O]ne of ordinary skill in the art would have understood that a symbol
`generator is a standard module of software code that was well known
`in the art and that the term “symbol generator” would have been
`sufficient to identify these modules of program code to one of
`ordinary skill in the art. One of ordinary skill in the art would have
`understood that there existed classes of software subroutines that
`programmers would have known to use to generate symbols on a
`display. For example, one of ordinary skill in the art would have
`known how to utilize common graphics libraries along with
`corresponding application programming interfaces (“APIs”) to
`generate images on a display.
`
`
`primary non-infringement arguments, which applied to all of the method claims,
`were divided infringement and lack of intent to indirectly infringe.
`
`
`
`3
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 10 of 36 PageID #:
`Case: 15-1732 Document: 39 Page: 9 Filed: 10/27/2015
`7207
`
`
`
`A549, ¶ 21. And Dr. Goldberg explained at the hearing that the specific software
`
`used to display symbols on a given device would be well-known to those skilled in
`
`the art because the software is basic, standard software that manufacturers provide
`
`for every device:
`
`Q.
`
`So would “symbol generator” as used in these patents, ’728 and
`the ’681, have connoted any particular structure to one of skill
`in the art?
`
`A. Sure. It’s the software that is used, as we talked about the
`system, for displaying the symbols, the images for each user on
`the screen. And I would note that every manufacturer of a
`device that can display stuff on the screen provides a library of
`software modules that a user or developer can use to display
`images on the screen. And so one of skill reading “symbol
`generator” in the context of these patents would know, oh,
`yeah, that’s the library, routine, that you give it, the image you
`want to display, and you give it the x, y coordinate, and it does
`it for you.
`
`Q. And Dr. Goldberg, you used the term “library.” Could you just
`explain briefly what you mean by “library”?
`
`A. Sure. Whenever a manufacturer manufactures a device and it
`wants developers to be able to write code for that device, it
`provides software that developers can use in order to build their
`applications. For example, you know, when Intel builds a new
`computer, it will provide some software that developers can use
`to interact with the hardware in order to, for example, display
`letters on the screen. And so these libraries are the software
`provided by the manufacturer in order for developers to be able
`to use.
`
`Q. So to be clear, Dr. Goldberg, does this claim language “symbol
`generator” refer to one of ordinary skill to existing specific
`algorithms or to simply advise him what he might be able to
`devise?
`
`
`
`4
`
`
`
`

`

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`Case: 15-1732 Document: 39 Page: 10 Filed: 10/27/2015
`7208
`
`
`
`A. No, it refers to the use of the software libraries that every
`device has in order to display an image on the screen at the
`right coordinates.
`
`*
`
`*
`
`*
`
`THE COURT: Let me ask you, on that last slide where does this
`suggest that the software would be available from the
`manufacturer of the device as opposed to being part of this
`invention?
`
`THE WITNESS: Because just the act of displaying images on a
`screen is part of every device. And so the symbol generator here
`is just what draws the symbols on the screen at the specified x
`and y coordinates. And that is what’s been provided with every
`computer that is able to display images on the screen. It
`wouldn’t have to be described any further because everybody
`with a computer science background would know exactly what
`to do.
`
`THE COURT: In 2006?
`
`THE WITNESS: Oh, yes. Going back to the ’60s.
`
`A798-801; see also A735, 24:8-13; A812-13.
`
`In sum, Dr. Goldberg’s testimony showed that those skilled in the art would
`
`understand the “symbol generator” elements to refer to basic, standard software,
`
`which manufacturers provide with every device, to select a symbol from a library
`
`and display it at an x-y position on the screen. Life360 did not submit any
`
`evidence in response. Therefore, Dr. Goldberg’s unrebutted testimony that those
`
`skilled in the art would have understood what a “symbol generator” is
`
`demonstrated that the “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
`
`
`
`5
`
`
`
`

`

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`Case: 15-1732 Document: 39 Page: 11 Filed: 10/27/2015
`7209
`
`
`
`structure.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir.
`
`2015). The district court’s finding to the contrary was clearly erroneous, and its
`
`conclusion that § 112, ¶ 6 applied should be reversed.
`
`As explained below, Life360 responds primarily by recasting Dr. Goldberg’s
`
`testimony to try to defend the district court’s erroneous findings and analysis.
`
`Life360 Br. at 22-35.
`
`A. The District Court Erred When It Found that AGIS’s Expert
`Admitted that “Symbol Generator” Was a “Coined” Term With
`No Clear Meaning
`
`Life360 argues that the district court correctly found that “symbol generator”
`
`was a “coined term lacking a clear meaning” because Dr. Goldberg purportedly
`
`admitted that he is “‘not aware’ whether the term ‘symbol generator’ has a
`
`meaning in computer science.” Life360 Br. at 22-23 (citing A11, A735, A798);
`
`see also Life360 Br. at 3, 15, 26, 30, 32, 33. But as AGIS explained (AGIS Br. at
`
`28-29), Dr. Goldberg did not admit this. He testified that “[w]hether you heard
`
`symbol generator in the course of studying computer science, I’m not aware,” but
`
`that in the context of these patents, “one of skill would understand [what a] symbol
`
`generator is.” A735, 21:23-22:12. And he testified that “I don’t recall if I’ve
`
`heard those two words together, but both ‘symbol’ and ‘generator’ are terms of art
`
`in computer science. So putting them together is completely comprehensible for
`
`one of skill.” A798 at 3-6. Instead of confronting this testimony, Life360
`
`
`
`6
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 13 of 36 PageID #:
`Case: 15-1732 Document: 39 Page: 12 Filed: 10/27/2015
`7210
`
`
`
`truncates it to omit Dr. Goldberg’s explanations that “one of skill would
`
`understand [what a] symbol generator is” and that “both ‘symbol’ and ‘generator’
`
`are terms of art in computer science . . . [s]o putting them together is completely
`
`comprehensible for one of skill.” Life360 Br. at 23. When Dr. Goldberg’s
`
`testimony above is read in context, and considered with the rest of his testimony
`
`(quoted above), it is clear that he did not admit that “symbol generator” is a coined
`
`term with no clear meaning. Therefore, the district court’s contrary finding, which
`
`Life360 acknowledges “was largely based” on this testimony (Life360 Br. at 23),
`
`was clearly erroneous.
`
`Life360 also repeatedly asserts that “symbol generator” is a generic, nonce
`
`term that is merely a “black box” substitute for “means,” like “device,” “module,”
`
`or “mechanism.” Life360 Br. at 3, 22, 23, 25, 28, 32, 34. But Life360 does not
`
`point to any evidence to support this conclusory assertion, and there is none. Dr.
`
`Goldberg’s testimony showed that those skilled in the art would have known that a
`
`“symbol generator” refers to a specific, well-known class of existing, available,
`
`software modules that perform a very basic and simple function—displaying
`
`symbols on a screen. Thus, “symbol generator” is not a generic placeholder term
`
`like “device” or “mechanism” that describes a “black box” that can perform
`
`myriad functions.
`
`
`
`7
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-6 Filed 08/04/23 Page 14 of 36 PageID #:
`Case: 15-1732 Document: 39 Page: 13 Filed: 10/27/2015
`7211
`
`
`
`To the contrary, as AGIS explained (AGIS Br. at 29-30), “symbol
`
`generator” is an example of a structure that takes its name from the specific
`
`function it performs, like “manipulator” and “detector,” both of which have been
`
`held not to invoke § 112, ¶ 6. See Duratech Indus. Int’l, Inc. v. Bridgeview Mfg.,
`
`Inc., 292 F. App’x. 931, 933 (Fed. Cir. 2008) (“‘Manipulator’ is not a generic
`
`structural term of the ilk of such placeholder terms as ‘mechanism,’ ‘device,’ or
`
`‘element.’”); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161
`
`F.3d 696, 704 (Fed. Cir. 1998) (“‘Detector’ is not a generic structural term such as
`
`‘means,’ ‘element,’ or ‘device’ . . . .”). Life360 tries to distinguish these cases by
`
`arguing that terms like “manipulator” and “detector” refer to “well-known classes
`
`of physical structures” that have clear meanings “outside the context of the patent”
`
`because the terms are defined in dictionaries. Life360 Br. at 25-26; see also id. at
`
`27-28. But a term need not be defined in a dictionary or have a clear meaning
`
`“outside the context of the patent” to avoid § 112, ¶ 6, so long as it has a clear
`
`structural meaning within the context of the patent. And a term need not refer to a
`
`class of physical structures, as opposed to, for example, software. This Court’s test
`
`is simply 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.”
`
`Williamson, 792 F.3d at 1348. This test is met here because the evidence showed
`
`
`
`8
`
`
`
`

`

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`7212
`
`
`
`that those skilled in the art would understand a “symbol generator” to refer to a
`
`well-known, specific class of software.
`
`As such, the primary case on which Life360 relies (Life360 Br. at 24-25),
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366 (Fed. Cir.
`
`2015), is distinguishable. The issue in Media Rights was whether the generic term
`
`“compliance mechanism” invoked § 112, ¶ 6, but the patentee in that case “d[id]
`
`not dispute that ‘compliance mechanism’ has no commonly understood meaning
`
`and is not generally viewed by one skilled in the art to connote a particular
`
`structure.” See 800 F.3d at 1372. In contrast, Dr. Goldberg’s unrebutted testimony
`
`here showed that those skilled in the art would understand the “symbol generator”
`
`elements to refer to a well-known, specific class of structures.
`
`Similarly, contrary to Life360’s argument (Life360 Br. at 28), the term
`
`“symbol generator” is not like the generic term “lever moving element” held to
`
`invoke § 112, ¶ 6, in Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir.
`
`1998). In that case, the evidence did not show that “lever moving element” had a
`
`well-understood meaning in the art, so the Court concluded that “a ‘moving
`
`element’ could be any device that can cause the lever to move.” Mas-Hamilton
`
`Grp., 156 F.3d at 1214. Here, in contrast, the evidence showed that those skilled in
`
`the art would understand “symbol generator” to refer not to “any device that can
`
`
`
`9
`
`
`
`

`

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`7213
`
`
`
`cause” symbols to be generated, but instead to a well-known, specific class of
`
`software.
`
`B.
`
`The District Court Erred When It Misconstrued the Testimony of
`AGIS’s Expert As Being Directed Only to Whether Those Skilled
`In the Art Could Create Software
`
`Life360 also recasts Dr. Goldberg’s testimony to try to support the district
`
`court’s erroneous finding that the testimony “seems to go to the issue of
`
`enablement, not indefiniteness, by focusing on what one of ordinary skill in the art
`
`could devise based on the specification.” A12 (citing A549, ¶ 21) (emphasis in
`
`original). Life360 asserts that Dr. Goldberg’s testimony that those skilled in the art
`
`“would have known how to utilize common graphics libraries along with
`
`corresponding application programming interfaces (‘APIs’) to generate images on
`
`a display” was merely evidence that they could “create” or “devise” or “build”
`
`software to generate symbols, not evidence that this software already existed.
`
`Life360 Br. at 30-31 (quoting A549, ¶ 21); see also Life360 Br. at 15. Life360’s
`
`argument echoes its argument to the district court that Dr. Goldberg merely
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`testified that those skilled in the art could “figure out” how to develop software to
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`generate symbols on a display, and that this testimony was irrelevant to whether
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`§ 112, ¶ 6 applied because it addressed enablement. A684-85; A818-22; AGIS Br.
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`at 18-21.
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`Dr. Goldberg did not testify that those skilled in the art could “figure out”
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`how to “create” or “devise” or “build” software to generate symbols, or that this
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`software did not already exist. He testified that they would have understood the
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`“symbol generator” elements to refer to a well-known class of existing, standard
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`software modules used to display symbols on a screen. A549, ¶ 21; A735, 23:23-
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`24:13; A798-801; A812-13. In particular, in the passage quoted by Life360
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`(Life360 Br. at 31) and the district court (A12), Dr. Goldberg testified that those
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`skilled in the art would know how to “utilize” this existing software, not how to
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`“create” or “devise” or “build” it. A549, ¶ 21; A798-801.
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`Therefore, Dr. Goldberg’s testimony was not directed to enablement, i.e.,
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`whether those skilled in the art could build a “symbol generator.” His testimony
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`was directed to whether the “symbol generator” elements invoked § 112, ¶ 6, i.e.,
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`whether they would have been “understood by persons of ordinary skill in the art
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`to have a sufficiently definite meaning as the name for structure.” Williamson, 792
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`F.3d at 1348. And, as AGIS explained (AGIS Br. at 18-21), Life360’s argument
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`and its recasting of Dr. Goldberg’s testimony confused the district court, which did
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`not even consider the testimony when deciding whether the “symbol generator”
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`elements invoked § 112, ¶ 6, even though that was the issue to which the testimony
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`was directed. A10-11; A549, ¶ 21. Led astray by Life360, the court instead
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`addressed this testimony only in deciding whether the specification disclosed
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`corresponding structure, after having already concluded that the elements invoked
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`§ 112, ¶ 6. A12-13 (citing A549, ¶ 21). In other words, the district court
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`erroneously ignored the testimony in considering the issue to which it was relevant,
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`and then misconstrued it in addressing a different issue to which it was not
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`relevant.
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`Life360 does not dispute that the district court addressed Dr. Goldberg’s
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`testimony under the wrong legal framework. In fact, Life360 repeats the district
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`court’s error by relying on the same irrelevant precedent on which the court relied,
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`namely, Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir.
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`2013). Life360 Br. at 31; A12-13. As AGIS explained (AGIS Br. at 32 & n.8),
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`Function Media did not address whether an element invoked § 112, ¶ 6, which is
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`the issue to which Dr. Goldberg’s testimony was directed, and the only issue in this
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`appeal. The element in Function Media recited “means,” and there was no dispute
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`that it invoked § 112, ¶ 6; the only issue was whether the specification disclosed
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`corresponding structure. See 708 F.3d at 1317-19. In the course of deciding that
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`issue, the Court in Function Media expressed the principle on which the district
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`court relied in this case, namely, that showing that one skilled in the art “could
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`devise some method to perform the function is not the proper inquiry as to
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`definiteness—that inquiry goes to enablement.” Id. at 1319 (emphasis in original);
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`A12-13. But this principle is irrelevant here: AGIS does not dispute on appeal the
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`12
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`district court’s finding that the specification does not disclose corresponding
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`structure if the “symbol generator” elements invoked § 112, ¶ 6; AGIS disputes
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`only the predicate finding that the elements invoked § 112, ¶ 6 in the first place.
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`Finally, Life360 asserts that Dr. Goldberg’s testimony was “conclusory,”
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`“unsupported,” and “uncorroborated.” Life360 Br. at 29, 31-32. These assertions
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`do not withstand scrutiny. Dr. Goldberg explained in his declaration (quoted
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`above) that those skilled in the art would know precisely which software to use,
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`namely, well-known “common graphics libraries along with corresponding
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`application programming interfaces (‘APIs’)” used to display symbols on a screen.
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`A549, ¶ 21. And he explained at the hearing (in the testimony quoted above) that
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`the specific software used for a given device would be well-known because the
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`software is standard software that manufacturers provide for every device. A798-
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`801; A735, 24:8-13; A812-13.
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`As the quoted excerpts show, Dr. Goldberg’s testimony plainly was not
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`conclusory or unsupported. Life360 ignores virtually all of this quoted testimony
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`and does not explain what “support” or “corroboration” was required. Life360
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`does not dispute that Dr. Goldberg is an expert in this field, and his unrebutted
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`testimony was that those skilled in this art would know that a “symbol generator”
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`refers to this specific class of existing, standard software, and that they would
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`know precisely what specific software to use for a given device. Nothing more is
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`required.
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`C. The District Court Erred When It Failed to Require Life360 to
`Rebut the Presumption that § 112, ¶ 6 Did Not Apply to the
`“Symbol Generator” Elements
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`As AGIS explained (AGIS Br. at 32-33), the district court erred by failing to
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`require Life360 to rebut the presumption that § 112, ¶ 6 was not invoked given that
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`AGIS did not use the term “means” in the “symbol generator” elements.2
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`Although the court acknowledged the presumption when it discussed the legal
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`framework (A7-8), when it analyzed whether the “symbol generator” elements
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`invoked § 112, ¶ 6, it did not refer to the presumption, state that it was applying it,
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`or require Life360 to rebut it (A10-11). Instead, the district court effectively put
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`the burden on AGIS and Dr. Goldberg to demonstrate that the “symbol generator”
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`elements did not invoke § 112, ¶ 6. For example, the court’s question to Dr.
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`Goldberg asking him “where does this suggest that the software would be available
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`from the manufacturer of the device” (A800) shows that the court considered it to
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`be Dr. Goldberg’s burden to show that the elements connoted structure. The
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`district court’s failure to put Life360 to its burden of rebutting the presumption was
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`reversible error. See Linear Technology Corp. v. Impala Linear Corp., 379 F.3d
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`1311, 1319-20 (Fed. Cir. 2004).
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`2 Although the en banc Court recently held in Williamson that the presumption is
`no longer “strong,” it did not eliminate the presumption. 792 F.3d at 1349.
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`Life360 responds by quoting the district court’s references to the
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`presumption when the court set forth the framework (A7-8) and when it analyzed
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`the “CPU software” elements (A15), and then insisting that the court must have
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`applied the presumption when it anal