Proper Claim Construction is Essential to a Determination of Patentabilty

In Intel Corp. v. Qualcomm Inc., [2020-1828, 2020-1867] (December 28, 2021), the Federal Circuit vacated the Board’s decision that claims 1–9 and 12 of U.S. Patent No. 8,838,949 were not unpatentable, because the PTAB failed to tie its construction of the phrase “hardware buffer” to the actual invention described in the specification. The Federal Circuit also vacated the Board’s decision that claims 16 and 17 were not unpatentable, because the Board failed to determine for itself whether there is sufficient corresponding structure in the specification to support the means-plus-function limitations in those claims to determine whether they are sufficiently definite to consider their validity. The ‘949 patent addresses a system with multiple processors, each of which must execute its own “boot code” to play its operational role in the system.

The Federal Circuit said that it was clear from the claim language that “hardware buffer” has meaning, but it is unclear what that meaning was. The Federal Circuit said that there is no definition to be found in the intrinsic evidence, and the determination of that meaning depends on understanding what the intrinsic evidence makes clear is the substance of the invention—what the inventor “intended to envelop.” The Federal Circuit concluded that the Board did not do enough to reach and articulate that understanding, and its claim construction is therefore wanting. The Federal Circuit explained that what was needed, then, was an analysis of the specification to arrive at an understanding of what it teaches about what a “hardware buffer” is, based on both how it uses relevant words and its substantive explanations. In this crucial respect, the Board fell short in its analysis here, and we think the Board is better positioned
than we are to correct the deficiencies.

The Federal Circuit noted that the Board’s construction was entirely a negative one—excluding “temporary” buffers. The Federal Circuit said that although there is no per se rule against negative constructions, which in some cases can be enough to resolve the relevant dispute, the Board’s construction in the present case was inadequate. It was not clear what precisely constitutes a
“temporary buffer” as recited in the Board’s construction.

With respect to claims 16 and 17, there is no dispute that claim 16 (and hence dependent claim 17) contains terms that are in means-plus-function format governed by 35 U.S.C. § 112(f). Because Intel agreed with the Board’s suggestion in the institution decision that two of the means-plus-function terms
in claim 16 were indefinite for lack of supporting structure, the Board concluded that Intel’s statement necessarily meant that Intel, as the petitioner, had not met its burden to demonstrate the unpatentability of those claims.

The Federal Circuit held that this was error and that a remand was required, because the Board did not
decide for itself whether required structure is present in the specification or whether, even if it was not, the absence of such structure precludes resolution of Intel’s prior-art challenges. The Federal Circuit added that to avoid confusion going forward, the Board should, in IPRs where Impossibility because indefiniteness applies, clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category.

Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were otherwise Patentable

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to decide whether claims 1-4 and 8 were patentable because these claims were indefinite.

The claims of the ‘591 patent are directed to methods and apparatuses for generating a displayable edited video data stream from an original video data stream. The Board determined that claim 1 (and claims 2-4 and 8) claimed both an apparatus and a method, and thus was indefinite under IPXL Holdings. Because the claims were indefinite, the Board declined to determine whether they otherwise defined patentable subject matter. The Board also found the claims indefinite because of the inclusion of “digital processing unit” which the Board found invoked 112(f), without identifying any corresponding stucture in the claims.

Samsung appealed arguing that the Board should have declared the claims in valid for indefiniteness. The Federal Circuit agreed with the Board that the Board did not have the authority to invalidate claims on that ground.

Samsung’s secondary argument was that the Board should have nonetheless assessed the patentability of claims 1 and 4–8 under sections 102 or 103. On this point, the Federal Circuit agreed.

The Federal Circuit noted that on the first ground of indefiniteness — mixed method and apparatus claiming, the indefiniteness problem was one of understanding when infringement occurred, and not necessarily what the claim actually means. Moreover, the Federal Circuit noted that the Board had previously held that IPXL-type indefiniteness does not prevent the Board from addressing patentability.

Thus the Federal Circuit remanded the case for the Board to attempt to apply 102 and 103 to the claims.

As to the second ground of indefiniteness, that “digital processing unit” invoked 112(f) without providing corresponding structure in the claims, the Federal Circuit disagreed. The Federal Circuit said that the question whether the term “digital processing unit” invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter’s choice not to employ the word “means. The Federal Circuit said that the Board pointed to no evidence that a person skilled in the relevant art would regard the term “digital processing unit” as purely functional. In fact, the patent owner argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is “an image processing device that people in the art are generally familiar with.” Moreover, the fact that claim 1 required the “digital processing unit” to be operably connected to a “data entry device” supports the structural nature of the term “digital processing unit,” as used in the claim.

The Federal Circuit rejected the Board’s conclusion that the term “digital processing unit,” as used in claim 1, invoked means-plus-function claiming,
and that for that reason claims 1 and 4–8 cannot be analyzed for anticipation or obviousness.

Board Erred in Failing to Apply § 112, ¶ 6 to “Mechanical Control Assembly”

In MTD Products Inc. v. Iancu, [2017-2292] (August 12, 2019), the Federal Circuit vacated the Board’s obviousness determination, finding that the Board erred in finding that the term “mechanical control assembly” was not a means-plus-function term governed by § 112, ¶ 6.

U.S. Patent No. 8,011,458 discloses a steering and driving system for zero turn radius (“ZTR”) vehicles. Both of the independent claims contain the phrase “mechanical control assembly.”

The “essential inquiry of whether a claim element invokes § 112, ¶ 6. is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word “means,” the claim limitation uses a similar nonce word that can operate as a substitute for “means” in the context of § 112, para. 6.” Generic terms like “module,” “mechanism,” “element,” and “device” are commonly used as verbal con-structs that operate, like “means,” to claim a particular function rather than describe a sufficiently definite structure. Even if the claims recite a nonce term followed by functional language, other language in the claim might inform the structural character of the limitation-in-question or otherwise impart structure to the claim term.

In assessing whether the claim limitation is in means-plus-function format, we do not merely consider an introductory phrase (e.g., “mechanical control assembly”) in isolation, but look to the entire passage including functions performed by the introductory phrase. The ultimate question is whether the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.

The Federal Circuit agreed with the Board that the term “mechanical control assembly” is similar to other generic, black-box words that it has held to be nonce terms similar to “means” and subject to § 112, ¶ 6 because the term does not connote sufficiently definite structure to one of ordinary skill in the art. The Federal Circuit further agreed that the rest of the claim language of the disputed phrase is primarily, but not entirely, functional. However the Federal Circuit said that the Board erred when it relied on the specification’s description of a “ZTR control assembly” to conclude that the claim term “mechanical control assembly” had an established structural meaning. The fact that the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures.

The Federal Circuit found that the Board’s analysis implied that so long as a claim term has corresponding structure in the specification, it is not a means-plus-function limitation. This view would leave § 112, ¶ 6 without any application, because any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all.

The Federal Circuit also disagreed with the Board’s interpretation of the prosecution history, finding that arguing that a limitation connotes structure and has weight is not inconsistent with claiming in means-plus-function format since means-plus-function limitations connote structure.

Given the lack of any clear and undisputed statement foreclosing application of § 112, ¶ 6, we conclude that the Board erred in giving dispositive weight to the equivocal statements it cited in the prosecution history.

Absence of “Means” Means §112(f) Did Not Apply

In Zeroclick, LLC v. Apple Inc., [2017-1267] (June 1, 2018) the Federal Circuit vacated and remanded the district court determination that claims of U.S. Patent Nos. 7,818,691 and 8,549,443 were invalid for indefiniteness, finding the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms.

At issue were the limitations “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” which the district court determined were means-plus-function limitations.

To determine whether § 112, para. 6 applies to a claim limitation, the presence or absence of the word “means” is important.  The failure to use the word “means” creates a rebuttable presumption that § 112, ¶ 6 does not apply. However, this presumption
can be overcome, and § 112, ¶ 6 will apply, if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.  The essential inquiry remains whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

The Federal Circuit noted that neither of the limitations at issue uses the word “means,” so presumptively, § 112, ¶ 6 does not apply to the limitations.  The Federal Circuit noted that while Apple argued that the limitations must be construed under § 112, ¶ 6, it provided no evidentiary support for that position, and thus the presumption against
the application of § 112, ¶ 6 to the disputed limitations remained unrebutted. The Federal Circuit found that the district court’s discussion was couched in conclusory language, relying on Apple’s arguments, contrasting them against Zeroclick’s contentions, but pointing to no record evidence that supports its ultimate conclusion that  § 112, ¶ 6 applies to the asserted claims.

The Federal Circuit said that the district court legally erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6.  The Federal Circuit noted that this was erroneous for at least three reasons: (1) the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions; (2) the court’s analysis removed the terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms; and (3) the district court made no pertinent finding that compels the conclusion that a conventional graphical user interface program or code is used in
common parlance as substitute for “means.”  The Federal Circuit concluded that the district court thus erred by effectively treating “program” and “user interface code” as nonce words and concluding in turn that the claims recited §means-plus-function limitations.


PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found 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 limitation.

The IPR challenged 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.  The Federal Circuit noted that while the Board correctly identified  “arrangement for reactivating the link” was a means plus function element, it failed to properly construe that limitation. The Board rejected IPCom’s proposed three-step algorithm allegedly disclosed in the ’830 specification for performing the “arrangement for reactivating the link” function, but the Board failed to identify what it believed to be the correct algorithm from the specification; that omission led to an incomplete construction of the claim limitation and is incompatible In re Donaldson.  §112, ¶ 6 [now 112(f)] 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.  The Federal Circuit said that the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.

The Federal Circuit vacated the Board’s claim construction of the “arrangement for reactivating the link” limitation, and remanded for the Board to identify the corresponding algorithm (if any) in the specification in the first instance.  The Federal Circuit further vacated the determination of obviousness because the Board never identified any algorithm for the “arrangement for reactivating the link” limitation, the Board further erred by failing to evaluate whether the prior art disclosed that algorithm (or its equivalents).


“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L., [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR2014-01236 that all of the challenged claims in  U.S. Patent 7,548,875 were invalid for obviousness.

The ‘875 patent relates to a method of delivering audio and/or visual files to a wireless device.  The prosecution lasted almost seven years, and the claims were only allowed after they were amended to recite a “wireless device means.”  The Board determined that “wireless device means” was not a means plus function element, but even if it was it did not require a device with multiple processors.

The Federal Circuit said that in determining whether a claim term invokes § 112 ¶ 6, the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  It is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.

The Federal Circuit agreed that We agree with MindGeek that “wireless device means” does not invoke § 112 ¶ 6 because it recites sufficient structure.  Although the term uses the word “means” and so triggers a presumption, the full term recites structure, not functionality. The claims do not recite a function or functions for the wireless device means to perform, and “wireless device” is “used in common parlance . . . to designate structure. The Federal Circuit further found that “wireless device means” did not require multiple processors, noting that at least one disclosed embodiment was exclusively software, and thus it would be improper to construe  “wireless device means” to require multiple processors.

The Federal Circuit found that substantial evidence supported the Board’s claim construction, and its resulting finding of obviousness.