The US Court of Appeals for the Federal Circuit agreed that the Patent Trial and Appeal Board (PTAB) did not err in its conclusions that a claim element reciting "means" did not invoke § 112 ¶ 6 and that the challenged claims were unpatentable as obvious. Skky, Inc. v. MindGeek, s.a.r.l., Case No. 16-2018 (Fed. Cir., June 7, 2017) (Lourie, J).
The patent at issue describes a method for delivering audio and/or visual files to a wireless device. Prosecution leading to the patent lasted almost seven years, and the Examiner eventually allowed the claims over the prior art after the claims were amended to recite a "wireless device means," which the Examiner believed to be a means-plus-function term that would invoke 35 USC § 112 ¶ 6.
In the institution decision, the PTAB determined that the "wireless device means" claim term did not invoke § 112 ¶ 6 "because 'wireless device' is not purely functional language, but rather language that denotes structure." After institution, patent owner continued to argue that regardless of whether the term at issue was a means-plus-function term, it should be construed to require "multiple processors, one of which must be a specialized processor." In its final written decision, the PTAB rejected patent owner's arguments and reiterated that the "wireless device means" recitation did not invoke § 112 ¶ 6 and that the term should not be construed to require additional processors. Patent owner appealed.
On appeal, the parties continued to dispute whether "wireless device means" should be construed as a means-plus-function term. The Federal Circuit agreed with the PTAB that the recitation did not invoke § 112 ¶ 6 because it recited sufficient structure. Specifically, the Court found that "[a]lthough the term uses the word 'means' and so triggers a presumption, the full term recites structure, not functionality; the claims do not recite a function . . . and 'wireless device' is used in common parlance to designate structure." The Federal Circuit noted that notwithstanding the Examiner's statements to the contrary, the Court was not bound by either the parties' or the Examiner's understanding of the law or claims. Additionally, the Court rejected patent owner's argument that the claims require multiple processors, because the written description contains embodiments where only a single processor is required or where no additional hardware is needed.
On the issue of obviousness, the Federal Circuit rejected patent owner's argument that the PTAB erred in its obviousness determination because it considered no more than the references previously considered by the Examiner. The Court cited the Supreme Court of the United States' Cuozzo decision ( IP Update, Vol. 19, No. 7) to note that one congressional objective of the inter partes review process is to give the US Patent and Trademark Office "significant power to revisit and revise earlier patent grants."
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