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 it proposed for a means-plus function limitation was not clearly linked to or associated with the recited functions, as required by 35 U.S.C. § 112 ¶ 6.
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:
- A resource results annotator for a customer self service system that performs resource search and selection comprising:
mechanism for receiving a resource response set of results obtained in response to a current user query;
mechanism for receiving a user context vector associated with said current user query, said user context vector comprising data associating an interaction state with said user and including context that is a function of the user; and
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 attempt to proffer a means-plus function construction for the "mechanism" terms that it admitted to being incorrect, 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 a reminder for Petitioners that the Board may not entertain a party's proposed corresponding structure for a mean-plus function limitation when the party admits such structure is improper to perform the functions recited in the limitation.
Footnote
1. IPR 2022-00439, Paper 11 (P.T.A.B. Oct. 3, 2022)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
