Means Plus Function

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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.Continue Reading How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

Petitioners are finding themselves caught in a Catch-22.  The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims.  Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies.

Recently, the PTAB decided that only some claims of Immersion Corporation’s U.S. Patent No. 8,659,571 were challengeable by Apple Inc. in an IPR because the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation” recited in claim 12 to determine the scope and meaning of claim 12.  Apple Inc., v. Immersion Corporation, IPR2016-01372, Paper 7 (January 11, 2017).
Continue Reading PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.