BRI: Even under BRI Means Plus Function Claims Limited by Structure Recited in Specification

by Dennis Crouch

IPCom v. HTC (Fed. Cir. 2017)

After IPCom sued HTC for infringing its U.S. Patent No. 6,879,830, HTC countered with its PTO request for inter partes reexamination of the asserted claims.  While the AIA Trials (i.e. inter partes reviews) are heard directly by a PTAB panel, reexaminations are first decided by a patent examiner before being appealed to the PTAB.  Here, the examiner initially sided with the patentee – finding the challenged claims patentable.  However, the Board issued a new grounds of rejection for most of the claims.  That obviousness rejection was later sustained (even after a claim amendment).  On appeal, the Federal Circuit has largely affirmed, but reversed a portion of the claim construction — this time the limits of means-plus-function claiming has helped the patentee.

One limitation found in challenged claim 1 requires: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

Although not written in means-plus-function language, the nonce word “an arrangement for” without further recited structure easily qualifies under 35 U.S.C. 112 p6.

Section 112 p6 (now 112(f)): An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

It turns out that the Federal Circuit already construed this very phrase as means-plus-function in its 2012 decision involving the same patent. HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270 (Fed. Cir. 2012).  However, when conducting its broadest reasonable construction of the claim limitation, the PTAB failed to particularly tie the MPF limitation to the structure (here algorithm) recited in the specification.  Rather, for the PTAB apparently any arrangement for achieving the stated function would fall within the claim scope.  On appeal, the Federal Circuit rejected the PTAB approach and instead held that a means plus function claim term is limited by the scope of the structural recitations found in the specification – even under the PTO’s broadest reasonable interpretation.

The decision here is not new law but instead parallels the important MPF case of In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).  In Donaldson, the PTO argued that the BRI construction of a means-plus-function claim term should encompass “any means capable of performing the recited function.”  On appeal, the en banc Federal Circuit rejected that argument – holding instead that even under BRI, construction of a means-plus-function limitation “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof.”

Like Donaldson, the Board here impermissibly treated the means-plus-function limitation in its patentability analysis as if it were a purely functional limitation.

On remand, the PTAB will need to reevaluate the scope of the claims and then determine whether the recited prior art discloses the requisite particulars.

[DECISION]