Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations
In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability of the challenged claims, its obviousness rejections were based on a faulty claim construction. IPCom GmbH & Co. v. HTC Corp., Case No. 16-1474 (Fed. Cir., July 7, 2017) (Chen, J).
After IPCom sued HTC for infringing its patent, HTC requested that the US Patent and Trademark Office (PTO) conduct inter partes re-examination of several claims of the patent. After the examiner found the claims patentable, HTC appealed to the PTAB, which issued a new ground of rejection against the claims for which re-examination was sought, as well as several other claims. IPCom amended the claims that were subject to the re-examination request, but the PTAB found the amended claims obvious. IPCom appealed.
On appeal, IPCom argued that the PTAB’s obviousness rejections were based on a flawed claim construction because (i) the PTAB never identified the structure in the specification corresponding to a means-plus-function claim limitation, and (ii) that the PTAB lacked jurisdiction to review a subset of the amended claims because those claims were not expressly considered by the PTAB in its first review of the examiner’s rejection.
Regarding the claim construction issue, the Federal Circuit agreed that the PTAB failed to properly construe the means-plus-function limitation, noting that § 112, ¶ 6 sets a limit on how broadly the PTO may construe a means-plus-function limitation even under the broadest reasonable interpretation standard. The language of a §112, ¶ 6 claim element must be interpreted in light of the corresponding structure disclosed in the specification, and the PTO may not disregard that structure when considering patentability. In construing the claim element in issue here, the PTAB rejected IPCom’s proposed three-step algorithm disclosed in the specification, but failed to identify what it believed to be the correct algorithm. After rejecting IPCom’s proposed algorithm, the PTAB treated the means-plus-function limitation as purely functional and concluded that the cited references disclosed the claimed function.
As for the PTAB’s jurisdiction regarding the subset of amended claims, the Federal Circuit noted that IPCom filed a request to reopen prosecution of the challenged claims (which included the subset of claims) in view of the PTAB’s initial decision, and that the matter was remanded to the examiner for consideration in view of the newly submitted claim amendments. The Federal Circuit explained that by amending the subset of claims, IPCom altered the scope of those claims, thus permitting HTC to challenge their validity. Hence, the PTAB properly considered HTC’s challenge to the amended subset of claims after IPCom reopened prosecution.