United States: The Board Denied Institution Due To Petitioner's Failure To Properly Construe A Means-Plus Function Limitation

Holding

In Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards v. International Business Machines Corp.,¹ the PTAB denied institution because Petitioner admitted that the corresponding structure that Petitioner proposed for a means-plus function limitation was not supported in the specification.

Background

Petitioner Ebates filed an IPR petition challenging claims 1-13 of Patent Owner IBM's U.S. Patent No. 6,785,676 ("the '676 patent") as being unpatentable under obviousness grounds. The '676 patent is directed to using an adaptive algorithm that incorporates contextual information to order and present query results for a user in a beneficial manner. Relevant portions of claim 1 are reproduced below with emphasis added:

1. A resource results annotator for a customer self service system that performs resource search and selection comprising:

Petitioner construed the two "mechanism for" limitations in claim 1 as means-plus function limitations, which requires identifying corresponding structure that is supported in the specification and associated with the recited functions. Petitioner first asserted that the "mechanism" limitations were indefinite for lacking support for any corresponding structure in the '676 specification. However, after acknowledging that indefiniteness is not a proper ground for an IPR, Petitioner then asked the Board to construe the limitations, "for the purposes of the [IPR]," to include a general-purpose computer as the corresponding structure and overlook the alleged lack of sufficient support in the specification for any corresponding structure.

PTAB Decision

The Board declined to accept Petitioner's request and, consequently, denied institution due to Petitioner's failure to proffer a legitimate means-plus function construction for the "mechanism" terms, thus violating 37 C.F.R. § 42.104(b)(3). In doing so, the Board never reached the merits of Petitioner's obviousness grounds.

Petitioner construed the "mechanism" limitations as means-plus function terms, which invokes certain petition requirements under 37 C.F.R. § 42.104. Specifically, section (b)(3) of this regulation requires identifying "specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function" when construing a means-plus function limitation. Here, the Board found that Petitioner failed to meet this requirement. The Board acknowledged Petitioner's position that the "mechanism" terms should be construed to have a corresponding structure of a general-purpose computer. However, this contradicted Petitioner's indefiniteness statements asserting that "neither a general-purpose computer nor any other structure in the '676 patent is clearly linked or associated with the recited functions." The Board rejected "general purpose computer" as the appropriate corresponding structure for the "mechanism" terms because Petitioner clearly stated that the specification did not support such an interpretation. Accordingly, the Board denied institution due to the Petitioner's failure to construe the challenged claims, as required under 37 C.F.R. § 42.104(b)(3).

Takeaway

This decision serves as an important reminder for Petitioners to use caution when taking inconsistent positions in the petition that could undermine an alleged claim construction. The Board will not entertain a claim construction solely for the purposes of a petition when it is unsupported or contradicted by other statements in the petition.

Footnote

1. IPR 2022-00439, Paper 11 (P.T.A.B. Oct. 3, 2022)

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