A coined-term element is generally subject to a means-plus-function interpretation. Here, for example, the claimed “symbol generator” for plotting user locations on a map was found to invoke 35 U.S.C. § 112, ¶ 6 because its name was coined for the purposes of the patent rather than being a commonly-understood term of art. “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.” It may therefore be best to avoid coined-terms for claim elements that are not intended to invoke 35 U.S.C. § 112, ¶ 6.
Background / Facts: The patent being asserted here is directed to a cellular communication system that allows multiple cellular phone users to monitor others’ locations and statuses via visual display of such information on a map. The claims recite a “symbol generator” that generates symbols representing each user in the network on the display of a user’s cellular phone.
Issue(s): Whether “symbol generator” in the asserted claims is in means-plus-function form pursuant to 35 U.S.C. § 112, ¶ 6, and is indefinite for lack of corresponding structure.
Holding(s): Yes. “[T]he term ‘symbol generator’ is a term coined for the purposes of the patents-in-suit. [] 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. … Irrespective of whether the terms ‘symbol’ and ‘generator’ are terms of art in computer science, 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). … Accordingly, because the term ‘symbol generator’ does not describe anything structural, the district court was correct to conclude that the asserted claims which recite the term ‘symbol generator’ are subject to 35 U.S.C. § 112, ¶ 6.”