PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and (3) the claim does not recite any function for the means term to perform.
In Skky, Inv. v. MindGeek, SARL, Appeal 16-2018 (Fed. Cir. June 7, 2017), the Federal Circuit upheld the PTAB’s decision that the claim term “wireless device means” of U.S. Patent 7,548,875 (the “’875 patent”) was not a means-plus-function term pursuant to Section 112 ¶ 6.
As reproduced below, claim 1 of the ’875 patent recites a method for delivering audio and/or visual files from a server to a “wireless device means”:
- A method of wirelessly delivering over the air one or more digital audio and/or visual files from one or more servers to one or more wireless device means comprising: …transmitting to said wireless device means said compressed audio and/or visual files wirelessly over the air, with or without an Internet network.
’875 Patent, claim 1 (emphasis added).
During the IPR proceeding, Skky, the assignee of the ’875 Patent, had argued that the claim term “wireless device means” was a means-plus-function term pursuant to Section 112 ¶ 6. Id. at 5.
The PTAB disagreed, however, finding that “wireless device means” did not invoke Section 112 ¶ 6, because “‘wireless device’ is not purely functional language, but rather language that denotes structure.” Skky, slip op. at 4-5. Using its broader construction (which did not invoke Section 112 ¶ 6), the PTAB canceled claim 1 as being obvious over the prior art or record.
Appellant Skky argued that the presence of “means” in “wireless device means” invokes Section 112 ¶ 6, where the related function of the “wireless device means” is “to request, wirelessly receive, and process a compressed audio and/or visual file.” Skky, slip op. at 8. Appellee MindGeek countered that “wireless device means” does not invoke § 112 ¶ 6 because the clause in which it appears does not describe any corresponding function, and instead denotes structure. Id.
The Federal Circuit agreed with MindGeek. Importantly, the Skky court enumerated several bases for how to overcome a Section 112 ¶ 6 means-plus-function presumption:
Although 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 or functions for the wireless device means to perform, and  “wireless device” is “used in common parlance . . . to designate structure.”
Skky, slip op. at 8.
Based on its reasoning, the court affirmed the PTAB’s decision canceling the challenged claims, including claim 1, as unpatentable over the prior art, finding that “wireless device means” is not a means-plus-function term under § 112 ¶ 6. Skky, slip op. at 8-9.
Practice note: The court’s reasoning provides useful insights for practitioners seeking to overcome a means-plus-function presumption and for those looking for guidance on how a future court may make Section 112 ¶ 6 (Section 112(f) of the AIA) determinations for patent claims that use the term “means.”
The Skky decision falls within the body of law regarding “rebutting” a means-plus-function presumption, although the Skky court chose not to use that specific language.