United States: Bringing Down The IPR Petition: Lack Of Specification Citations Proves Fatal In Addressing Means-Plus-Function Claims

In Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 (P.T.A.B. Mar. 15, 2023), the Patent Trial and Appeal Board ("Board") denied institution of inter partes review. Because Petitioner failed to propose a means-plus-function claim construction, even in the alternative, there was no evidence as to how asserted prior art should be applied to means-plus-function claims. The Board held therefore that Petitioner did not demonstrate with a reasonable likelihood that it would prevail in showing the asserted claims to be unpatentable under 35 U.S.C. § 103(a). Id.

Background

U.S. Patent No. 8,816,994 ("the '994 patent") relates to computer navigation and facilitating navigation when using an apparatus having a small display. Independent claim 1 is representative and recites:

'994 patent at claim 1 (emphasis added). Petitioner asserted that claims 1–5 and 10 of the '994 patent were unpatentable under 35 U.S.C. § 103(a). The parties disputed whether Petitioner satisfied its requirements regarding a proposed construction of the "sensing means" limitation recited in the independent claims of the '994 patent.

Petitioner did not provide a proposed means-plus-function construction for the "sensing means" limitation, arguing that it relied on "Patent Owner's district court position and that the 'sensing means' limitation of Claims 1–5 and 10 is not a § 112(f) term and does not require construction." IPR2022-01378, Paper 12 at *8-9. During the district court proceeding, Petitioner proposed that the claim term "sensing means" is "in means + function format under Section 112(f)" and proposed that the function is "'to sense and provide an output indication of at least two of position, orientation, shape, and size of the electromagnetic radiation pattern' and the structure is 'indefinite.'" Id. at *9.

Patent Owner argued Petitioner is required to either: "(1) identify the corresponding structures or materials under 37 C.F.R. § 42.104(b)(3) or (2) provide evidence to rebut the presumption that the claimed 'means' recitals are not subject to [35 U.S.C. § 112(f)]." Id. Patent Owner argued that Petitioner failed to satisfy either requirement, and thereby "improperly attempt[ed] to push its claim construction burden onto" Patent Owner. Id. at *10.

Board Decision

After determining that the "sensing means" was a means-plus-function limitation, the Board held that "Petitioner was required, pursuant to 37 C.F.R. § 42.104(b)(3), to 'identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.'" Id. at *13. Having not done that, even as an alternative construction, the Board held that Petitioner did not satisfy the requirements under 37 C.F.R. § 42.104(b)(3). Id. at *14. Merely stating how the prior art allegedly disclosed the same or equivalent structures that performed the "sensing means" functions of the '994 patent claims was not sufficient to satisfy Petitioner's requirements under 37 C.F.R. § 42.104(b)(3) to identify the structure corresponding to the recited "sensing means." Id. at *13–14.

The Board even noted the warning in the Consolidated Practice Guide that "[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3)." Id. at *11.

Because Petitioner failed to identify a structure corresponding to the "sensing means" recited in the asserted claims, the Board held that it could not "ascertain the differences between the claimed invention and the asserted prior art, as required." Id. at *15–16 (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)). Thus, Plaintiff did not demonstrate with a reasonable likelihood that it would prevail in showing the asserted claims are unpatentable under 35 U.S.C. § 103(a) as obvious over the asserted prior art. Id. The IPR petition was denied, and no trial instituted.

Take-aways

The Board's decision highlights the importance of satisfying the requirements of 37 C.F.R. § 42.104(b)(3) if a petitioner wants to lodge a successful IPR petition against a claim potentially reciting a means-plus-function claim limitation. Failure to "identify the specific portions of the specification that describe the structure, materials, or acts corresponding to each claimed function" as required under 37 C.F.R. § 42.104(b)(3) could result in the Board denying institution. Other petitioners have met the same fate, such as in Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards v. International Business Machines Corp., IPR 2022-00439, Paper 11 (P.T.A.B. Oct. 3, 2022)¹ and as far back as Pride Solutions, LLC v. NOT DEAD YET Mfg., Inc., IPR2013-00627, Paper 14 (P.T.A.B. March 17, 2014).

Footnote

1. See Jameson K. Gardner, The Board Denied Institution Due to Petitioner's Admission that Its Proposed Structure for a Means-Plus Function Limitation Was Incorrect, Finnegan (Apr. 11, 2023), as another instance where the Board denied institution of an IPR petition for failure to satisfy the requirements under 37 C.F.R. § 42.104(b)(3).