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`EXHIBIT H
`EXHIBIT H
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`Case: 15-1732 Document: 31 Page: 1 Filed: 08/11/2015
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`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
`
`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.
`
`August 11, 2015
`
`
`
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`

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`
`
`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: August 11, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/s/ Mark A. Hannemann
`Mark A. Hannemann
`KENYON & KENYON LLP
`
`
`
`i
`
`
`
`

`

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`
`
`TABLE OF CONTENTS
`
`
`CERTIFICATE OF INTEREST ................................................................................ i
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iv
`
`STATEMENT OF RELATED CASES .................................................................... 1
`
`JURISDICTIONAL STATEMENT ......................................................................... 2
`
`INTRODUCTION .................................................................................................... 3
`
`STATEMENT OF ISSUES ...................................................................................... 7
`
`STATEMENT OF THE CASE ................................................................................. 8
`
`STATEMENT OF FACTS ..................................................................................... 11
`
`I.
`
`II.
`
`AGIS and the Asserted Beyer Patents .......................................................... 11
`
`The District Court’s Ruling that the Asserted System and Device
`Claim Elements Are Subject to § 112, ¶ 6.................................................... 12
`
`A.
`
`B.
`
`The “Symbol Generator” and “CPU Software” Elements of the
`Asserted System and Device Claims .................................................. 13
`The Evidence that Those Skilled In the Art Would Have
`Understood the “Symbol Generator” and “CPU Software”
`Elements to Refer to Well-Known Classes of Standard
`Software Modules............................................................................... 15
`The District Court’s Confusion that AGIS’s Expert Testimony
`Related to Enablement ....................................................................... 18
`
`SUMMARY OF ARGUMENT .............................................................................. 22
`
`C.
`
`STANDARD OF REVIEW .................................................................................... 23
`
`ARGUMENT .......................................................................................................... 24
`
`I.
`
`
`
`The Judgment that the Asserted System and Device Claims Are
`Indefinite Should Be Reversed ..................................................................... 24
`
`ii
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`
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`

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`A.
`
`The “Symbol Generator” Elements Are Not Subject to § 112,
`¶ 6 ....................................................................................................... 25
`
`1.
`
`2.
`
`The Evidence Showed that Those Skilled In the Art
`Would Have Understood the “Symbol Generator”
`Elements to Refer to a Well-Known Class of Standard
`Software Modules .................................................................... 26
`
`The District Court Erred In Concluding that the “Symbol
`Generator” Elements Are Subject to § 112, ¶ 6 ....................... 28
`
`B.
`
`The “CPU Software” Elements Are Not Subject to § 112, ¶ 6 .......... 34
`
`1.
`
`2.
`
`The Evidence Showed that Those Skilled In the Art
`Would Have Understood the “CPU Software” Elements
`to Refer to Two Well-Known Classes of Standard
`Software Modules .................................................................... 35
`
`The District Court Erred In Concluding that the “CPU
`Software” Elements Are Subject to § 112, ¶ 6 ........................ 37
`
`C.
`
`§ 112, ¶ 6 Should Apply Only Where a Claim Element Uses the
`Term “Means” .................................................................................... 39
`
`CONCLUSION ....................................................................................................... 44
`
`
`
`
`
`
`
`iii
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`

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`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) ..................................................................... 33
`
`Page(s)
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) ..................................................................... 32
`
`Cole v. Kimberly-Clark Corp.,
`102 F.3d 524 (Fed. Cir. 1996) ....................................................................... 41
`
`Commil USA, LLC v. Cisco Systems, Inc.,
`135 S. Ct. 1920 (2015) ................................................................................... 10
`
`Commil USA, LLC v. Cisco Systems, Inc.,
`720 F.3d 1361 (Fed. Cir. 2013) ..................................................................... 10
`
`Conn. Nat’l Bank v. Germain,
`503 U.S. 249 (1992)....................................................................................... 40
`
`Duratech Indus. Int’l, Inc. v. Bridgeview Mfg., Inc.,
`292 F. App’x. 931 (Fed. Cir. 2008) ............................................................... 30
`
`Ex Parte Stanley,
`121 USPQ 621 (B.P.A.I. 1958) ..................................................................... 41
`
`Exxon Mobil Corp. v. Allapattah Servs., Inc.,
`545 U.S. 546 (2005)....................................................................................... 40
`
`Function Media, LLC v. Google, Inc.,
`708 F.3d 1310 (Fed. Cir. 2013) .............................................................. 32, 38
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996) ................................................................ 30, 41
`
`Hybritech, Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) ..................................................................... 42
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004) .............................................................. 27, 36
`
`
`
`iv
`
`
`
`

`

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`
`
`Linear Technology Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) ..................................................................... 33
`
`Mass. Inst. of Tech. v. Abacus Software,
`462 F.3d 1344 (Fed. Cir. 2006) ..................................................................... 29
`
`Personalized Media Comm’ns, LLC v. Int’l Trade Comm’n,
`161 F.3d 696 (Fed. Cir. 1998) .................................................... 27, 29, 30, 36
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013) .............................................................. 27, 36
`
`Raytheon Co. v. Roper Corp.,
`724 F.2d 951 (Fed. Cir. 1983) ....................................................................... 41
`
`Watts v. XL Sys., Inc.,
`232 F.3d 877 (Fed. Cir. 2000) ....................................................................... 26
`
`Williamson v. Citrix Online, LLC,
`No. 2013-1130, 2015 U.S. App. LEXIS 10082
`(Fed. Cir. June 16, 2015) (en banc) ....................................................... passim
`
`Statutes
`
`28 U.S.C. § 1291 ........................................................................................................ 2
`
`28 U.S.C. § 1295(a)(1) ............................................................................................... 2
`
`28 U.S.C. § 1331 ........................................................................................................ 2
`
`28 U.S.C. § 1338(a) ................................................................................................... 2
`
`35 U.S.C. § 112, ¶ 6 ......................................................................................... passim
`
`Other Authorities
`
`1162 O.G. 59 ............................................................................................................ 41
`
`H.R. Rep. No. 1923, 82d Cong., 2d Sess. (1952) .................................................... 40
`
`M.P.E.P. § 2181(I)(A) (9th ed. Mar. 2014) ............................................................. 30
`
`M.P.E.P. § 2181(II)(B) (9th ed. Mar. 2014) ............................................................ 38
`
`
`
`v
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`
`
`

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`STATEMENT OF RELATED CASES
`
`No other appeal in or from the same civil action has been before this Court
`
`or any other appellate court. There are no pending cases known to counsel that
`
`will directly affect or be directly affected by this Court’s decision in this appeal.
`
`
`
`
`
`
`
`1
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`

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`JURISDICTIONAL STATEMENT
`
`
`
`Plaintiff-Appellant Advanced Ground Information Systems, Inc. (“AGIS”)
`
`timely appealed on June 9, 2015 to this Court from the final judgment of the
`
`United States District Court for the Southern District of Florida, entered on May
`
`12, 2015 in favor of Defendant-Appellee Life360, Inc. (“Life360”).
`
`The district court had jurisdiction over this action for patent infringement
`
`under 28 U.S.C. §§ 1331 and 1338(a).
`
`This Court has jurisdiction over this appeal under 28 U.S.C. §§ 1291 and
`
`1295(a)(1).
`
`
`
`2
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`
`
`
`
`

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`
`
`INTRODUCTION
`
`Plaintiff AGIS appeals from the pre-trial ruling of the district court that 35
`
`U.S.C. § 112, ¶ 6 applies to the asserted system and device claims even though
`
`they do not use the term “means.” This erroneous ruling, which led to the
`
`judgment that these claims are indefinite, left AGIS with only method claims to
`
`assert at trial. While the jury rejected all of the defendant Life360’s invalidity
`
`challenges to the method claims, and while there was little dispute that these
`
`claims were collectively infringed by users of Life360’s software application,
`
`Life360 was able to avoid indirect infringement by disputing intent and arguing
`
`that the claimed steps were not carried out by a “single actor.”
`
`AGIS’s patents are directed to inventions that enhance the ability of the
`
`members of a group to communicate with one another using mobile devices. In
`
`particular, they describe and claim embodiments of a network of mobile phones
`
`with touch screen displays and GPS technology, in which the location of each
`
`member of the network is represented by a symbol on a map displayed on the
`
`touch screen of each phone, and each member can quickly and easily communicate
`
`with any other member (via email, text message or phone call) by touching that
`
`member’s symbol on the map. AGIS, a small technology company founded by the
`
`inventor, Malcolm K. “Cap” Beyer, filed the first application in the patent family
`
`in 2004, years before the iPhone and Android smartphones with touch screens and
`
`
`
`3
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`
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`

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`
`
`GPS technology were introduced, and used the patented technology in its products
`
`sold to military and government agencies.
`
`In 2014, AGIS asserted the patents against Life360, a larger company, which
`
`in about 2008 began developing, and makes available for download, a software
`
`application for mobile devices that enables members of a group to locate and
`
`communicate with each other by touching symbols representing each user on a
`
`map displayed on the touch screen of each device.
`
`The litigation took a wrong turn when the district court ruled before trial that
`
`several claim elements in the asserted system and device claims that do not use the
`
`term “means” are nevertheless subject to § 112, ¶ 6, and therefore are indefinite
`
`because the specification does not disclose adequate corresponding structure. In
`
`the wake of this ruling, AGIS had to stipulate, subject to appeal, that those claims
`
`are invalid, and proceeded to trial on the asserted method claims only.
`
`At trial, Life360 challenged the validity of three of the four asserted claims,
`
`but the jury rejected all of its invalidity defenses, confirming that the claimed
`
`methods are novel and not obvious, and that the specification adequately describes
`
`the inventions. Life360 also did not seriously dispute that the subject matter of the
`
`claims covers the use of its software application. Instead, Life360 primarily
`
`argued that there was no predicate act of direct infringement because of “divided
`
`infringement” among several users of the application, and that Life360 lacked the
`
`
`
`4
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`
`
`

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`intent necessary for indirect infringement because it believed AGIS’s patents are
`
`invalid and not infringed. The jury accepted at least one of these arguments and
`
`returned a general verdict of non-infringement.
`
`In sum, this is a case where the district court erroneously ruled before trial
`
`that the system and device claims are subject to 35 U.S.C. § 112, ¶ 6, even though
`
`they do not use the term “means,” and where the jury confirmed that the method
`
`claims are patentable inventions but found no infringement—not because the
`
`claims did not cover the accused technology, but either because of divided
`
`infringement or because of a lack of intent to indirectly infringe. Notably, Life360
`
`would not have been able to present the same divided infringement arguments for
`
`the system and device claims had AGIS been able to assert those claims at trial.
`
`And Life360 would not have been able to argue that it lacked the intent to
`
`indirectly infringe in response to AGIS’s allegations of direct infringement by
`
`Life360 of those claims.
`
`AGIS now appeals the indefiniteness judgment. As explained below, the
`
`district court erred in concluding that the system and device claims are subject to §
`
`112, ¶ 6. AGIS’s unrebutted expert evidence showed that those skilled in the art
`
`would have understood the claim elements in question to refer to specific, well-
`
`known structures, namely, well-known classes of existing, available, standard
`
`software modules. The district court misconstrued and disregarded this evidence,
`
`
`
`5
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`which caused it to erroneously conclude that the claim elements are subject to §
`
`112, ¶ 6. The judgment that these claims are indefinite should be reversed and the
`
`case remanded for further proceedings on those claims.
`
`
`
`
`
`
`
`6
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`
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`

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`
`
`STATEMENT OF ISSUES
`
`1. Whether the district court erred in concluding that the “symbol
`
`generator” and “CPU software” elements of the asserted system and device claims
`
`are subject to 35 U.S.C. § 112, ¶ 6, and thus whether the judgment that those
`
`claims are indefinite should be reversed, where:
`
`a)
`
`b)
`
`the claim elements do not use the term “means”;
`
`Life360 did not meet its burden of rebutting the presumption that §
`
`112, ¶ 6 does not apply;
`
`c)
`
`AGIS’s unrebutted expert evidence showed that those skilled in the
`
`art would have understood the claim elements to refer to well-
`
`known structures, namely, well-known classes of existing,
`
`available, standard software modules; and
`
`d)
`
`the district court disregarded AGIS’s expert evidence by
`
`misconstruing it as being directed to enablement instead of to
`
`whether § 112, ¶ 6 applies.
`
`
`
`
`
`7
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`

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`
`
`STATEMENT OF THE CASE
`
`
`
`AGIS filed this action against Life360 on May 16, 2014, alleging in its
`
`complaint (A122–207) that Life360 directly and indirectly infringed four patents,
`
`all of which are owned by AGIS and name Malcolm K. “Cap” Beyer as inventor:
`
`U.S. Patent No. 7,031,728 (the “’728 patent”) (A38–50); U.S. Patent No.
`
`7,672,681 (the “’681 patent”) (A51–63); U.S. Patent No. 7,764,954 (the “’954
`
`patent”) (A64–81); and U.S. Patent No. 8,126,441 (the “’441 patent”) (A82–97).
`
`
`
`After the parties submitted claim construction briefs (and AGIS submitted
`
`expert evidence), the district court on November 4, 2014, held a claim construction
`
`hearing, and on November 21, 2014, issued its claim construction decision. A2–
`
`37.1 In its decision, which is discussed in more detail below in the Statement of
`
`Facts, the district court ruled that claim elements in the asserted system and device
`
`claims, claims 3 and 10 of the ’728 patent and claims 5 and 9 of the ’681 patent,
`
`are indefinite. Specifically, the district court concluded that the “symbol
`
`generator” and “CPU software” claim elements are subject to 35 U.S.C. § 112, ¶ 6,
`
`and that the claim elements are indefinite because the specification does not
`
`disclose adequate corresponding structure. A9–20.
`
`
`1 The district court’s claim construction decision has not been published.
`
`
`
`8
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`
`
`
`
`In the wake of the district court’s indefiniteness ruling, the parties stipulated
`
`that the system and device claims are invalid as indefinite, subject to appeal, and
`
`AGIS agreed that it would not assert those claims at trial. A856−61.2
`
`AGIS proceeded to trial on the asserted method claims, claim 7 of the ’728
`
`patent, claim 1 of the ’681 patent, claim 1 of the ’954 patent, and claim 5 of the
`
`’441 patent. A1386–89. At trial, AGIS presented evidence that end users (referred
`
`to as “administrative users”) had directly infringed each of the four method claims
`
`by carrying out the recited steps, and that Life360 had induced and contributed to
`
`that direct infringement. See, e.g., A2137–62; A2394–99; A2444–46; A2450–56;
`
`A2470–74; A2494–96; A2502–06; A4107–08.
`
`In response, Life360 presented two primary non-infringement defenses.
`
`First, it presented a “divided infringement” defense, arguing that there had been no
`
`predicate act of direct infringement because no single actor had carried out all of
`
`the method steps of any claim. According to Life360, a combination of the
`
`administrative user, another end user (the “invitee”), and the Life360 software
`
`application collectively carried out the steps. See, e.g., A3005; A3007−08;
`
`A3011−15; A3019; A3022−24. Second, Life360 presented a lack of intent to
`
`infringe defense, arguing that even if there had been direct infringement by an
`
`
`2 In view of the district court’s indefiniteness decision and the parties’ stipulation,
`the district court did not address any other validity issues for the asserted system
`and device claims.
`
`
`
`9
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`
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`

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`
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`administrative user, Life360 lacked the intent and knowledge required to induce or
`
`contribute to that infringement because it believed AGIS’s patents are invalid and
`
`not infringed. See, e.g., A2421–26; A3024.3 Life360 also challenged three of the
`
`four asserted claims as obvious and two claims as lacking an adequate written
`
`description. See, e.g., A2730–83; A3025−28.
`
`The jury returned a verdict that AGIS had not proven that any of the four
`
`asserted method claims were infringed by Life360, but that Life360 had not proven
`
`that any of the challenged claims are invalid. A2960–63.
`
`
`
`The district court entered judgment in favor of Life360 on May 12, 2015.
`
`A1. AGIS timely appealed to this Court on June 9, 2015. A3091–93.
`
`
`
`
`
`
`3 Life360’s lack of intent theory was based on then-binding precedent of this Court,
`which held that an accused infringer’s belief that a patent is invalid could negate
`the intent necessary to induce infringement. See Commil USA, LLC v. Cisco
`Systems, Inc., 720 F.3d 1361, 1368−69 (Fed. Cir. 2013) . Two weeks after the
`district court entered judgment in this case, the Supreme Court reversed this
`Court’s decision in Commil, holding that an accused infringer’s belief that a patent
`is invalid is not a defense to inducement. See Commil USA, LLC v. Cisco Systems,
`Inc., 135 S. Ct. 1920, 1928−30 (2015).
`
`
`
`10
`
`
`
`

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`
`
`STATEMENT OF FACTS
`
`I.
`
`AGIS and the Asserted Beyer Patents
`
`AGIS is a small technology company, software developer and military
`
`contractor. A124; A1980−84; A1994–95. Malcolm K. “Cap” Beyer, Jr., a
`
`graduate of the United States Naval Academy and a former Marine, is AGIS’s
`
`founder and CEO, and the inventor of the AGIS patent portfolio. Id.; A1976–77.
`
`Mr. Beyer founded AGIS shortly after the September 11, 2001, terrorist attacks
`
`because he realized that many first-responder and civilian lives were lost that day,
`
`in part, because of poor communications systems. A124; A1980–81. He
`
`envisioned and developed a new system that would use PDAs and cellular phones
`
`to provide users with better situational awareness than conventional military and
`
`first-responder radio systems. A124; A1982–84.
`
`AGIS developed prototypes of its patented technology that matured into its
`
`LifeRing system. A124; A1986. LifeRing provides first responders, law
`
`enforcement, and military personnel with what is essentially a tactical operations
`
`center built into hand-held or notebook-sized form factors. A124; A1983–84;
`
`A2016–22. Using GPS-based location technology and existing or special-purpose
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`cellular communications networks, LifeRing users can exchange location, heading,
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`speed, and other information with other members of their group, see each other’s
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`locations superimposed onto onscreen maps and satellite images, and rapidly
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`communicate and coordinate their efforts. A124–25; A1984–85; A2016–22. The
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`system also interfaces with military command-and-control systems. A125; A1949.
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`The four asserted patents each relate to methods, devices and systems for
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`establishing a communication network for designated users (also called
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`“participants”) of mobile devices, such as cellular phones.
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`For example, the first patent in the family, the ’728 patent, describes a
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`mobile device with a touch screen display. A42, 1:6–15; A47, 11:10–42. The
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`display depicts the location and status of other participants in the communication
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`network on a map. A47, 11:10–42. A participant in the communication network
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`may initiate a telephone call with, send a text message, data or a picture to, or
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`communicate with, another participant on the network by touching a symbol that
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`represents the other participant on the screen of the mobile device. Id.
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`The ’681 patent builds on the technology of the ’728 patent, and describes a
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`system and method for creating and modifying the symbols displayed on the touch
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`screen displays of participants’ mobile devices. A61–62, 9:60–11:56.4
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`II. The District Court’s Ruling that the Asserted System and Device Claim
`Elements Are Subject to § 112, ¶ 6
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`As explained below, the district court erroneously ruled before trial that the
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`“symbol generator” elements (in claims 3 and 10 of the ’728 patent and claims 5
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`4 The other two asserted patents, the ’954 and ’441 patents, add additional features,
`but are not at issue in this appeal because the district court’s decision being
`appealed affected only claims in the ’728 and ’681 patents.
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`and 9 of the ’681 patent) and the “CPU software” elements (in claim 10 of the ’728
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`patent and claim 9 of the ’681 patent) are subject to 35 U.S.C. § 112, ¶ 6, and then
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`concluded that these elements are indefinite because the specification does not
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`disclose adequate corresponding structure. A9–20.
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`A. The “Symbol Generator” and “CPU Software” Elements of the
`Asserted System and Device Claims
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`All four of the asserted system and device claims recite a “symbol
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`generator” that generates symbols (representing each participant in the network) on
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`the display of one or more cellular phones in the network.
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`Claim 3 of the ’728 patent is a system claim that recites a “communication
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`system to provide a cellular phone network for a group of participants, each of the
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`participants having an individual portable cellular phone” with a set of recited
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`features, in which “each of the cellular phones in the communications net of
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`participants contain[s] . . . [a] symbol generator in said CPU that can generate
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`symbols that represent each of the participants’ cell phones in the communication
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`network on the display screen.” A47, 12:52–64 (emphasis added).
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`Claim 5 of the ’681 patent is a system claim that is similar to claim 3 of the
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`’728 patent in all relevant respects, except that claim 5 recites a “symbol generator
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`in said CPU that can generate symbols that represent each of the participants in the
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`communication network on the display screen,” instead of “each of the
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`participants’ cell phones” as in claim 3. A62, 12:52–64 (emphasis added).
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`Claim 10 of the ’728 patent and claim 9 of the ’681 patent are device claims
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`that both recite a “cellular phone for use in a communication network for a
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`plurality of participants comprising . . . a symbol generator connected to said CPU
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`and said database for generating symbols on said touch screen display screen.”
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`A48, 14:28–48; A63, 13:44–14:8 (emphasis added).
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`Moreover, claim 10 of the ’728 patent and claim 9 of the ’681 patent also
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`both recite that the “cellular phone” also comprises “CPU software.” Specifically,
`
`claim 10 recites that the cellular phone comprises “CPU software for selectively
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`polling other participants with a cellular phone.” A48, 14:48–49. And claim 9
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`recites that the cellular phone comprises “CPU software that causes the exchange
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`of data with other participants with a cellular phone.” A63, 14:9–10.
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`In sum, none of the asserted system and device claims uses the term
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`“means” or otherwise manifests that AGIS intended to invoke 35 U.S.C. § 112, ¶ 6,
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`and thereby limit the claims to corresponding structure disclosed in the
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`specification. The “symbol generator” and “CPU software” elements were not the
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`points of novelty of the claims, and, as explained below, those skilled in the art
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`would have understood these elements to refer to well-known, conventional classes
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`of existing, readily available, standard software modules. Moreover, during
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`prosecution, the PTO never indicated that § 112, ¶ 6 applied to any of these claim
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`elements. In fact, the PTO issued initial rejections based in part on findings that
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`these elements were disclosed in the prior art without applying § 112, ¶ 6 or
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`identifying corresponding structure in the specification. See, e.g., A4897–98;
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`A4908–11; A5378–83; A5386–91.
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`B.
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`The Evidence that Those Skilled In the Art Would Have
`Understood the “Symbol Generator” and “CPU Software”
`Elements to Refer to Well-Known Classes of Standard Software
`Modules
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`
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`Life360 contended before the district court that the “symbol generator” and
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`“CPU software” claim elements are subject to § 112, ¶ 6, and that these claim
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`elements are indefinite because the specification does not disclose adequate
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`corresponding structure. A262–70. These claim elements are presumed not to be
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`subject to § 112, ¶ 6, because they do not use the term “means.” However, Life360
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`did not submit any expert evidence to meet its burden of rebutting the presumption
`
`that § 112, ¶ 6, does not apply. See, e.g., A242–443; A679–97; A703–707;
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`A818−22. In particular, Life360 did not submit any evidence that those skilled in
`
`the art would not have understood these claim elements to refer to well-known
`
`structures. Id.
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`
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`AGIS, on the other hand, did not merely rest on the presumption but
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`submitted expert testimony from Benjamin Goldberg, Ph.D., a professor of
`
`computer science at New York University. A543–76; A797−804; A812−13. Dr.
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`Goldberg explained that those skilled in the art would have understood the
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`“symbol generator” and “CPU software” elements to refer to specific, well-known
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`structures. A549, ¶ 21; A550–51, ¶¶ 24–25; A554, ¶¶ 33–34; A735, 21:22–22:12,
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`23:5–17,