Friday, January 31, 2014

EnOcean wins appeal at the CAFC


EnOcean GmbH (“EnOcean”) appeals from an order of the U.S. Patent and Trademark Office (“PTO”), Board of Patent Appeals and Interferences (“Board”), finding all of EnOcean’s claims involved in Patent Interference No. 105,755 with Face International Corporation (“Face”) unpatentable over a combination of prior art that includes PCT Application No. PCT/GB01/00901 to Burrow (“Burrow reference”). See J.A. 50. Because the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limita- tions lack support in its priority German and PCT appli- cations, we vacate-in-part1 the Board’s order with respect to EnOcean’s claims and motions, and we remand for further proceedings.

Of the issues

Here, EnOcean challenges the Board’s construction that its receiver claims invoke § 112, ¶ 6.


Notably, these claims all lack the word “means,” thus entitling them to a presumption that they are not means-plus-function claims. Despite the benefit of this presumption, the Board concluded that “the recited ‘re- ceiver’ element of the involved EnOcean claims invokes § 112, ¶ 6.” J.A. 47. The Board found “that there is no distinction in meaning between ‘receiver’ and ‘signal receiving means,’” and stated that “the receiver of the EnOcean claims is defined in the claims solely in terms of functional language.” Id.
On appeal, EnOcean challenges the Board’s determi- nation that its receiver claims invoke § 112, ¶6. EnOcean argues that the claim limitation “receiver” is reasonably well understood in the art as a name for a structure which performs the recited function. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (applying this test to the claim term “detent mechanism”).

We agree with EnOcean. The term “receiver” (i.e., the absence of the term means) presumptively connotes sufficiently definite structure to those of skill in the art. See Personalized Media, 161 F.3d at 703-04. And in this case, Face has not overcome that presumption. Indeed, the record indicates that the term “receiver” conveys structure to one of skill in the art—the Board itself made a factual finding that that the “skilled worker would have been familiar with the design and principles of the types of components utilized in the claimed invention, includ- ing . . . receivers.” J.A. 18.


For the reasons articulated in section II.A, supra, EnOcean has demonstrated that a person of ordinary skill in the art could understand the bounds of the invention merely by reading the term “receiver,” which is present in EnOcean’s German and PCT applications. In requiring that the German and PCT applications “expressly describe the structure of the receiver,” the Board applied an incorrect standard. J.A. 45. Since the inventors did not invent the receiver, and the Board found that the structure was well known as of the filing date, the inventors were “not obliged . . . to describe . . . the particular appendage to which the im- provement refers, nor its mode of connection with the principal machine.” Webster Loom Co. v. Higgens, 105 U.S. 580, 586 (1881). “This enables patents to remain concise statements of what is new, not cumbersome repetitions of what is already known and readily provided by reference.” Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1324 (Fed. Cir. 2010).


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