Treatment of means-plus-function limitations by the PTAB

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In three recent inter partes reviews (IPRs), the Patent Trial and Appeal Board (PTAB) construed means-plus-function claim terms under 35 U.S.C. § 112, sixth paragraph.  These decisions show that an IPR Petitioner must offer a proposed claim construction for any means-plus-function claim terms, pointing out the corresponding structure with specificity in the disclosure, and direct the PTAB to prior art that has the same structure as that of the proposed claim construction. Otherwise, the Petitioner risks the PTAB denying institution of the petition. 

Gracenote, Inc. v. Iceberg Industries, LLC

In Gracenote, Inc. v. Iceberg Industries, LLC (IPR2013-00551, Paper No. 6, February 28, 2014) the Petition was denied. One of the reasons for this denial was that the Petitioner had not provided any claim construction for several means-plus-function limitations.

The PTAB determined that certain claim terms of U.S. Patent No. 7,174,293 were means-plus function claim terms.  For the limitations “receiving means” and “signal generation means,” the Petitioner argued that the specification describes no corresponding structure, material, or acts for the term. Thus, the Petitioner did not propose any construction for the means-plus function term. Id. at pages 18 and 19.  The PTAB disagreed with the Petitioner with respect to both limitations and went on to provide their own construction of the claim terms. Importantly, because the Petitioner did not provide the required construction for several means-plus-function terms, the PTAB found that the Petitioner did not present sufficient evidence to support a finding that the disputed claim was anticipated. For at least that reason, the PTAB determined that the Petitioner failed to demonstrate a reasonable likelihood of prevailing in its challenge to the disputed claims. Id. at page 44. Accordingly, the PTAB denied institution of IPR.

Blackberry Corporation v. Mobilemedia Ideas

In Blackberry Corporation v. Mobilemedia Ideas, LLC (IPR2013-00036, Paper No. 65, March 7, 2014), the PTAB terminate the IPR proceeding because the specification failed to specify any structure or algorithm corresponding to a means-plus-function limitation.  While the PTAB believed that the claim was indefinite for this reasons, such a finding would have been inconsistent with the scope of an IPR proceeding.

In Blackberry, the PTAB determined that a “processing means for encrypting the information signals prior to storage in said memory means” of U.S. Patent No. 6,871,048 was a means-plus function limitation.  The PTAB also determined that the specialized function of “encrypting information signals” prior to storage must have, as its corresponding structure, a special purpose computer programmed to perform a disclosed algorithm causing the computer to accomplish the recited function. The ’048 patent however, as acknowledged by the Patent Owner during the oral argument, failed to disclose any specific algorithm with which to program a microprocessor to achieve the specialized function of encrypting information signals. Id. at pages 13-14.

Since there was no corresponding structure to perform the above-mentioned specialized function, the PTAB determined that the claims were indefinite and declined to conduct a prior art analysis based on the functional recitation of the means-plus function element alone. Id at page 20. Accordingly, the PTAB terminated the IPR proceeding.

Because this proceeding had already been terminated with respect to the Petitioner, Blackberry, the decision to terminate the proceeding was painless to the Petitioner. Id at page 2.

Pride Solutions v. Not Dead Yet Manufacturing

In Pride Solutions LLC v. Not Dead Yet Manufacturing, Inc. (IPR2013-00627, Paper No. 14, March 17, 2014), the PTAB denied institution of the IPR, because the prior art asserted by Petitioner did not include structures equivalent to the recited “retention means.” Id. at page 11.

The Petitioner asserted that the “retention means” has not a means plus function limitation, but rather a broad feature that would correspond to a “mechanism that retains something.” Id. at page 6.  However, the PTAB found that the “retention means” of U.S. Patent No. 8418,432 was a means-plus function limitation. The PTAB determined, consistent with the Petitioner’s proposed construction, that the corresponding structure is a retention block or a retention stop in the form of an L-shaped bracket. Id. at page 9.  The PTAB found that the prior art cited by the Petitioner included completely different structures that cannot be considered equivalent to the L-shaped bracket. Id. at pages 10 and 11.  As such, the PTAB denied institution of the IPR.

Take Away

Based on these three recent IPRs, a Petitioner should offer a proposed claim construction for means-plus-function claim terms and point out the corresponding structure with specificity in the disclosure. The Petitioner should also direct the PTAB to prior art that has equivalent structure to the corresponding structure of the proposed claim construction. Otherwise, the Petitioner risks denial of the IPR Petition.

Moreover, where there is a concern that the PTAB may find that there is no corresponding structure or algorithm described in the specification of the patent at issue, as in Blackberry (PR2013-00036), Petitioners must carefully weigh whether or not to file an IPR Petition.