In EnOcean GmbH v. Face International Corp., No. 12-1645 (Fed. Cir. Jan. 31, 2014), the Federal Circuit vacated-in-part the Board's order finding all of EnOcean GmbH's ("EnOcean") claims involved in Patent Interference No. 105,755 with Face International Corporation ("Face") unpatentable, and remanded for further proceedings.

EnOcean owns the rights to U.S. Patent Application No. 10/304,121 ("the EnOcean application"), which contains claims to a self-powered switch.  The named inventors on the EnOcean application originally disclosed their new switch in a German application filed on May 24, 2000, and in a PCT application filed on May 21, 2001.  Face is the real party of interest in U.S. Patent No. 7,084,529, which also claims a self-powered switch.  After the Board declared an interference between EnOcean and Face, it found that all the involved Face claims were unpatentable under 35 U.S.C. § 103 in view of PCT Application No. PCT/GB01/00901 to Burrow ("the Burrow reference") in combination with several other references.

Under 37 C.F.R. § 41.207(c), the Board next applied the presumption that the claims of the EnOcean application would be unpatentable for the same reason that Face's claims were unpatentable.  To rebut the presumption, EnOcean needed to show that its involved claims could benefit from the filing date of its German and PCT applications to thereby eliminate the Burrow reference.  However, the Board found that EnOcean's disclosure of a "receiver" in its German application did not support the "means for receiving" limitation in the claims of the EnOcean application.  The Board also found that while certain receiver claims of the EnOcean application lacked "means for" language, the claims were defined solely by their function, and thus were construed as means-plus-function claims.  Because the German application failed to expressly describe the structure of the receiver and did not support EnOcean's means-plus-function claims, the Board accorded no benefit of priority to EnOcean's claims, found all of EnOcean's claims unpatentable under § 103 for the same reason that Face's claims were unpatentable, and dismissed all other pending motions.  EnOcean appealed.

"Given the demonstrated familiarity that one of skill in the art would have with a 'receiver' and the Board's own factual finding that a skilled worker would know what a 'receiver' is, we hold that in this case the term is not the 'black box that performs a recited function' that Face would have us believe it is."  Slip op. at 8.

On appeal, the Federal Circuit first determined whether the receiver claims should be treated as
means-plus-function claims.  Noting that the receiver claims lack the word "means," the Federal Circuit noted that the claims were entitled to a presumption that they are not means-plus-function claims.  Furthermore, the Court found that the term "receiver" presumptively connotes sufficiently definite structure to those of skill in the art.  The Court also observed that EnOcean had provided extensive evidence demonstrating that the term "receiver" conveys known structure to the skilled person. 

The Court was not persuaded by Face's argument that the term "receiver" was too broad to recite sufficiently definite structure.  Rather, the Court emphasized that just because "the disputed term is not limited to a single structure does not disqualify it as a corresponding structure, as long as the class of structures is identifiable by a person of ordinary skill in the art."  Slip op. at 7 (quoting Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1322 (Fed. Cir. 2004)).  The Court's conclusion that the term "receiver" recited sufficiently definite structure to avoid invoking 35 U.S.C. § 112, ¶ 6 (now 35 U.S.C. § 112(f)), was well supported by the Court's precedent in similar cases.

Turning to the priority issue, the Court emphasized that to obtain the benefit of a parent application's filing date, although the claims of the later-filed application must be supported by the written description in the parent in sufficient detail for one skilled in the art to conclude that the inventor made the invention as of the filing date sought, the disclosure of sufficient structure simply needs to permit one of ordinary skill in the art to perceive the bounds of the invention.  The Court found that the Board applied an incorrect standard in requiring that the German and PCT applications "expressly describe the structure of the receiver" for a person of ordinary skill to understand the bounds of the invention.  Id.  at 11 (citation omitted).  According to the Court, since the structure was well known as of the filing date, a person skilled in the art could understand the bounds of the invention merely by reading the term "receiver" in EnOcean's German and PCT applications.  Accordingly, the Court concluded that the Board erred in finding that the received claims were not entitled to claim the benefit of the German and PCT applications' priority dates.

Judges: Rader, Lourie, Prost (author)

[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, February 2014.

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