Friday, July 07, 2017

CAFC explicates "means plus function" in IPCom / HTC case

IPCom GmbH & Co. (IPCom) is the owner of U.S. Patent
No. 6,879,830 (’830 patent), which describes and
claims a method and system for handing over a mobile
phone call from one base station to another base station.
After IPCom sued HTC Corporation (HTC) for infringing
the ’830 patent, HTC requested that the U.S. Patent and
Trademark Office (PTO) conduct inter partes reexamination
of claims 1, 5–26, and 28–37 of the ’830 patent, which
the PTO granted. The reexamination went through two
rounds of review by the Examiner and the Patent Trial
and Appeal Board (Board). In the first round, the Examiner
concluded that the claims were patentable, but HTC
appealed to the Board, which issued a new ground of
rejection for claims 1 and 5–30. In the second round,
IPCom amended claims 1, 5–26, and 28–37,1 but the
Board found that these amended claims were obvious
under 35 U.S.C. § 103 in view of various combinations of
McDonald,2 Anderson,3 GSM,4 and PACS.5

In its appeal, IPCom alleges that, even though it had
amended the scope of claims 31–37 during its second
round before the Examiner, the Board lacked jurisdiction
to review the Examiner’s patentability determination of
these amended claims in the Board decision now on
appeal. IPCom also argues that the Board’s obviousness
rejections were based on a flawed claim construction,
because the Board never identified the structure in the
patent specification that corresponds to the “arrangement
for reactivating the link” means-plus-function claim
limitation. IPCom also appeals the Board’s factual findings
for several other claim limitations and the motivation
to combine the prior art references in the manner
claimed by the ’830 patent.

We conclude that, under the circumstances of this
case, the Board properly had the authority to consider the
patentability of claims 31–37 and thus reject IPCom’s
procedural challenge to the Board’s rejection of these
. But we agree with IPCom that the Board failed to
conduct a proper claim construction of the “arrangement
for reactivating the link” claim limitation, and we vacate
and remand the obviousness rejections based on that
. We affirm the Board’s findings in all other

The problem with the Board's analysis:

The Board’s analysis was erroneous because it never
specified what it believed was the actual algorithm disclosed
in the ’830 patent for performing the “arrangement
for reactivating the link” function. It was not enough for
the Board to reject the individual steps of IPCom’s proposed
three-step algorithm
. As we explained in Donaldson,
“the PTO may not disregard the structure
disclosed in the specification corresponding to such language
when rendering a patentability determination.”
Donaldson, 16 F.3d at 1195. And in HTC Corp., we held
that “the functional claiming in claims 1 and 18 of the
’830 patent must include an adequate algorithm.” HTC
Corp., 667 F.3d at 1283. Here, as in Donaldson, the
Board never engaged in a comparison of the asserted prior
art’s disclosure to the “structure” disclosed in the ’830
patent, due to the Board’s failure to determine what the
’830 patent describes as the structure (i.e., the algorithm
in combination with the processor and transceiver)
performing the “arrangement for reactivating the link”
function. Like Donaldson, the Board here impermissibly
treated the means-plus-function limitation in its patentability
analysis as if it were a purely functional limitation.

Of Donaldson

In Donaldson, the PTO rejected Donaldson’s claims by
construing a means-plus-function limitation to encompass
any means capable of performing the recited function,
giving no consideration to the content in the specification.
Id. The PTO argued that such a practice was permissible
under the broadest reasonable interpretation standard
used by the agency. Id. at 1194–95. We rejected the
PTO’s view, holding that the agency must follow the plain
language of §112 ¶ 6.7 Id. at 1193. We explained that the
construction of a means-plus-function limitation under
§ 112 ¶ 6 “must look to the specification and interpret
that language in light of the corresponding structure,
material, or acts described therein, and equivalents
thereof, to the extent that the specification provides such

disclosure.” Id. We “h[e]ld that paragraph six applies
regardless of the context in which the interpretation of
means-plus-function language arises, i.e., whether as part
of a patentability determination in the PTO or as part of a
validity or infringement determination in a court.” Id. In
other words, § 112 ¶ 6 “sets a limit on how broadly the
PTO may construe means-plus-function language under
the rubric of ‘reasonable interpretation,’” and “the PTO
may not disregard the structure disclosed in the specification
corresponding to such language when rendering a
patentability determination.”8 Id. at 1194–95.


Post a Comment

<< Home