The following cases address the Board’s interpretation of functional limitations in challenged claims.
BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 (PTAB Mar. 7, 2014). If the scope of the claims cannot be determined without speculation, the differences between the claimed invention and the prior art cannot be ascertained. The Board terminated the proceeding because the specification did not disclose the structure or algorithm for a computer-implemented means-plus-function element in the challenged claims. In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general-purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, ¶ 6.
Space Exploration Technologies Corp. v. Blue Origini LLC, IPR2014-01378, Paper 6 (PTAB Mar. 3, 2015). The Board denied institution because petitioner did not identify the corresponding structure in the specification of the challenged patent which performs the functions for several means-plus-function limitations in the claims, as required by 37 C.F.R. § 42.104(b)(3). Petitioner argued that the specification does not disclose structure for performing the recited functions, and urged the Board to construe the means limitations as corresponding to “any suitable structure” that performs the functions. The Board indicated that such a construction is improper under 35 U.S.C. § 112, ¶ 6, and 37 C.F.R. § 42.100(b). The Board agreed with petitioner that the specification does not disclose the structure for performing the recited functions. Consequently, the Board determined that the claims are indefinite and thereby not amenable to construction. However, the Board declined review because inter partes review is limited to anticipation and obviousness challenges under 35 U.S.C. §§ 103 and 103, not indefiniteness under 35 U.S.C. § 112.
First Data Corp. v. Coqui Technologies, LLC, IPR2015-01667, Paper 6 (PTAB Feb. 9, 2016). The Board denied institution because, contrary to petitioner’s arguments, the specification of the challenged patent does not disclose the structure corresponding to several several means-plus-function limitations in the challenged claims. Except for a narrow exception concerning functions that are “coextensive” with a microprocessor itself, such as “processing,” “receiving” and “storing” data, a computer-implemented means-plus-function element is indefinite unless the specification discloses the specific algorithm used by the computer to perform the recited function. Because the petition does not identify adequate structure corresponding to the means limitations, the Board does not have sufficient information to construe the claims.
Ubisoft, Inc. v. Guitar Apprentice, Inc., IPR2015-00298, Paper 24 (PTAB Apr. 1, 2016). In a final written decision, the Board reversed its previous determination in the institution decision that the “proficiency sending module” and “mode control module” limitations of the claims did not invoke 35 U.S.C. § 112 ¶ 6. In the institution decision, the Board determined that these module limitations did not invoke § 112 ¶ 6 because there is a strong presumption that a limitation lacking the terms “means for” is not subject to § 112 ¶ 6. However, Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc) expressly overruled prior decisions that applied a “strong” presumption that a limitation lacking the terms “means for” is not subject to § 112 ¶ 6. The claimed module limitations are similar to the limitation at issue in Williamson. Each limitation replaces the term “means” with the term “module,” and recites certain functions performed by the module. The challenged patent explains that a person of ordinary skill in the art “would conceive of numerous structural means” for performing the recited functions of the claimed modules. Petitioner does not identify any corresponding structure for the module limitations. As a result, petitioner also does not show that the asserted references disclose the corresponding structure for those limitations or an equivalent. The Board determined that petitioner did not demonstrate that the claims with the module limitations are unpatentable.