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ARTICLE · 17 MAY 2020

MPF – Corresponding Structure = Trouble For Petitioners

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Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition.

United StatesIntellectual Property
John Marlott
John Marlott
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Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition. Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2020-00046, Paper 6 (PTAB Apr. 1, 2020).

We have previously discussed the potential complications faced by IPR petitioners challenging patent claims that include means-plus-function limitations.  In particular, petitioners sometimes get tripped up by the PTAB rule requiring the petition to identify the corresponding structure in the specification for means-plus-function claim terms.  See 37 C.F.R. § 42.104(b)(3) ("Where the claim to be construed contains a means-plus-function ... limitation ... the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.").

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