PTAB Cannot Treat Pre-AIA Means-Plus-Function Limitations As Purely Functional Under the Broadest Reasonable Interpretation Standard

IPCOM GMBH & CO. v. HTC CORPORATION: July 7, 2017. Before Prost, Clevenger, Chen.

Takeaway:

  • Pre-AIA §112 ¶ 6 (means-plus-function) claim construction analysis requires that the Board not only identify the particular claimed function, but also identify the corresponding structure, material, or acts that perform that function in the specification.
  • Under 37 C.F.R. § 41.77(c), wherein a patent owner has filed a request for reopening of prosecution in response to a Board decision, a third party may file written comments in response to the Board’s decision, including new prior art, and need not explain why the additional prior art could not have been presented earlier.
  • By amending claims after an appeal to the PTAB from an inter partes reexamination, a patent owner opens the door to permit a third party to challenge all newly amended claims, including previously unchallenged claims.

Procedural Posture:

Patent Owner-Appellant appealed PTAB’s finding of obviousness in inter partes reexamination proceeding.  CAFC affirmed in part, vacated in part, and remanded.

Synopsis:

  • Claim Construction – Means-Plus-Function: The CAFC held that the Board impermissibly treated means-plus-function language in its patentability analysis as if it were a purely functional limitation. The Board rejected patent owner IPCom’s proposed algorithm for performing an “arrangement for reactivating the link” function, but failed to identify what it believed to be the correct algorithm from the specification, which led to an incomplete claim construction.  Pre-AIA § 112 ¶ 6 requires a two-step analysis:  i) identifying the particular claimed function, and ii) looking to the specification and identifying the corresponding structure, material, or acts that perform that function.
  • PTAB Procedures – Inter Partes Reexamination: The CAFC rejected appellant IPCom’s procedural argument that the Board cannot rely on prior art references which appellee HTC raised after IPCom’s amendments under 37 C.F.R. § 41.77(b).  IPCom reasoned that the art cannot be considered because HTC did not explain why the additional prior art could not have been raised previously in the proceeding.  Applying the Administrative Procedure Act’s “Arbitrary and Capricious” standard, the CAFC concluded that the PTAB’s interpretation of § 41.77(c) was acceptable. Accordingly, the court did not require HTC to explain why the additional prior art could not have been presented earlier.
  • PTAB Procedures – Inter Partes Reexamination: The CAFC rejected appellant IPCom’s argument that the PTAB lacked jurisdiction to consider claims not present in HTC’s original notice of appeal to the Board. The reexamination proceeding went through two rounds of review.  After round one, the challenged claims were held invalid on appeal by the Board.  IPCom amended both challenged and unchallenged claims.  In round two, HTC challenged the newly amended claims.  The CAFC held that by amending claims, IPCom opened the door to permit HTC to challenge the amended claims.

 

Authored by Sheila Mortazavi, Lee Davis, and Ian Moore

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