Examiner’s determination that a claim term is means-plus-function in allowing an application does not bind the Appeals Board and CAFC.
| June 19, 2017
Skky, Inc. v. Mindgeek, S.A.R.I.
June 7, 2017
Before Lourie, Reyna and Wallach. Opinion by Lourie.
Summary
The CAFC held that the Board correctly interpreted the term “wireless device means” as not a means-plus-function limitation. As a result Skky’s method claim was subject to a broader interpretation making the claim obvious over art which had been of record during prosecution of the application.
Details
Skky owns US patent 7,548,875 (“’875 patent”), which describes a method for delivering audio and/or visual files to a wireless device. The patent purports to allow users to “browse, download, and listen to or watch sound or image files without the need for hand wired plug-in devices or a computer connection to the Internet.”
During extensive prosecution the Examiner relied upon U.S. Patent 7,065,342 (“Rolf”), which describes a system and method for wirelessly transmitting music over a network to a cellular phone. The Examiner only allowed the claims over Rolf after they were amended to recite a “wireless device means,” which the Examiner believed to be a means-plus-function term invoking 35 U.S.C. § 112 ¶ 6.
Claim 1 recites:
- 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:
compressing said one or more digital audio and/or visual files, wherein said audio and /or visual files comprise one or more full or partial master recordings of songs, musical scores or musical compositions, videos or video segments, movies or movie segments, film or [film] segments, one or more image clips, television shows, human voice, personal recordings, cartoons, film animation, audio and/or visual advertising content and combinations thereof, and
wherein said compressing comprises normalizing, sampling and compressing said digital audio and/or visual files; storing compressed audio and/or visual files in one or more storage mediums; and transmitting to said wireless device means said compressed audio and/or visual files wirelessly over the air, with or without an Internet network.
Mindgeek filed an IPR asserting that the ‘875 patent was obvious over Rolf in view of a publication entitled “MP3: The Definitive Guide” (“MP3 Guide”) which describes attributes of the mp3 audio file format.
In the institution decision for the IPR, the Board determined that “wireless device means” does not invoke § 112 ¶ 6 because “‘wireless device’ is not purely functional language but rather language that denotes structure.”
During the IPR proceeding Skky relied on the written description and prosecution history to argue that the term properly invokes § 112 ¶ 6 and has a function “[t]o request, wirelessly receive, and process a compressed audio and/or visual file, and structure that requires multiple processors, wherein one or more processors is a specialized processor primarily dedicated to processing compressed multimedia data.
Alternatively, Skky argued that even if “wireless device means” is not a means-plus-function term it should still be construed to require multiple processors one of which must be a specialized processor.
The Board maintained that the “wireless device means” was not means-plus-function and found that Rolf discloses a “wireless device means” through its disclosure of a cell phone, and Rolf discloses downloading of a song. Based on those findings, the Board concluded that MindGeek had proven that the challenged claims are unpatentable as obvious.
Skky appealed the Board’s conclusion that “wireless device means” does not invoke § 112 ¶ 6 and does not require multiple processors as well as various aspects of the merits of the obviousness determination.
The CAFC noted that to determine whether a claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013) (internal quotation marks and citations omitted).
Skky argued that the presence of “means” in “wireless device means” creates the presumption that §112 ¶ 6 has been invoked, and that the function of the “wireless device means” is “to request, wirelessly receive, and process a compressed audio and/or visual file.”
Skky also contended that the Examiner’s specific indication that the term invokes § 112 ¶ 6, as well as MindGeek’s initial same understanding, counsels that result. Skky argued that the written description supports its argument relating to the function corresponding to “wireless device means” and that such means requires multiple processors including a specialty processor.
The Court sided instead with MindGeek that “wireless device means” does not invoke §112 ¶ 6 because its clause recites sufficient structure. The Court further noted that although the term uses the word “means” and so triggers a presumption, the full term recites structure, not functionalty; 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’s arguments were considered to be an attempt to improperly import limitations from the written description into the claims.
The Court went on to insist that they are not bound by the Examiner’s holding that the term was means-plus-function. As to the Examiner’s statements at the time of allowance the CAFC noted that this did not change the result as the Examiner did not explain why he believed “wireless device means” invoked § 112 ¶6, the functionality performed by the “wireless device means,” or how he believed the addition of that term overcame the prior art of record.
Skky further argued that even if “wireless device means” does not invoke § 112 ¶ 6, the term still should be construed to require multiple processors, wherein one is a specialized processor primarily dedicated to processing compressed multimedia data. Skky contended that the written description contains several embodiments requiring a cell phone, which includes a processor, attached to an accessory with its own processor, and that a software only embodiment does not fall within the claim language. Skky asserted that the prosecution history also supported this requirement, based on statements made during prosecution and because, as the claims were allowed over Rolf, they must cover something more than the wireless device with a single processor disclosed in Rolf.
The CAFC again sided with MindGeek and the Board that the challenged claims do not require multiple processors. Looking to the written description, the Court noted that specification contained embodiments where the wireless device contains multiple processors but also a software embodiment in which the wireless device contains a single processor.
Based on this claim construction, the disputed claims were found to be obvious over the previously cited Rolf. As to the fact that Rolf had been before the Examiner and he had allowed the claim, the Court noted: “Skky has not cited any authority for the proposition that once an examiner concludes that claims are patentable over a reference, that reference may no longer be considered further in determining a claim’s validity; indeed, the Supreme Court has characterized the ‘congressional objective’ of the IPR process as ‘giving the Patent Office significant power to revisit and revise earlier patent grants.’ Cuozzo, 136 S. Ct. at 2139-40. Accordingly, Skky’s general challenges to the Board’s obviousness analysis are not persuasive.”
The CAFC affirmed the Board’s decision.
Takeaways
- Patent owners upon receiving an allowance should carefully review the Examiner’s reasons for the allowance and if necessary request further clarification as to the basis for allowing the claim.
- During prosecution, terms which are found to invoke means-plus-function should have the basis for the determination explained by the Examiner in detail.
