June 19, 2018

June 19, 2018

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June 18, 2018

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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.


  • 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.


  • 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.

© 2018 Andrews Kurth Kenyon LLP


About this Author

Sheila Mortazavi, Andrews Kurth Law Firm, Intellectual Property and Litigation Attorney

Sheila’s practice covers all facets of intellectual property litigation and counseling, with a particular emphasis on patent infringement litigation across a wide range of technologies.

Sheila has handled all phases of litigation before federal and state courts, the International Trade Commission and arbitration panels, including pre-trial investigation, fact and expert discovery, motion practice, trial and appellate practice. She advises clients on litigation strategy in complex patent cases, and has represented both plaintiffs and defendants...

Lee Davis, Andrews Kurth Law Firm, Patent Attorney

Lee's practice focuses on intellectual property (IP) and technology and includes advice and counseling, procurement, licensing and acquisition, and litigation regarding all aspects of patents, trademarks, copyrights, and trade secrets. Lee is a registered patent attorney and has substantial experience preparing and prosecuting both domestic and foreign patent applications. He has technical experience in a variety of fields, including technology relating to downhole tools, drilling assemblies, drill bits, oilfield tubulars and premium threaded connections, coiled tubing, shaker screens, subsea pumping systems, internal combustion engines, Web server software, data redundancy and directory services.

Ian Moore, Andrews Kurth Law Firm, Intellectual Property Attorney

Ian is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Ian’s practice is focused on patent litigation and PTAB proceedings relating to mechanical and electrical engineering technologies, as well as to software.