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ARTICLE · 31 JULY 2017

PTAB Cannot Treat Pre-AIA Means-Plus-Function Limitations As Purely Functional Under The Broadest Reasonable Interpretation Standard

Hunton Andrews Kurth LLP
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Patent Owner-Appellant appealed PTAB's finding of obviousness in inter partes reexamination proceeding. CAFC affirmed in part, vacated in part, and remanded.

United StatesIntellectual Property
Sheila Mortazavi
Sheila Mortazavi
Lee Davis
Lee Davis
Ian A. Moore
Ian A. Moore
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IPCOM GMBH & CO. v. HTC CORPORATION: July 7, 2017. Before Prost, Clevenger, Chen.

Takeaway:

  • Pre-AIA §112 ¶ 6 (means-plus-function) claim construction analysis requires that the Board not only identify the particular claimed function, but also identify the corresponding structure, material, or acts that perform that function in the specification.
  • Under 37 C.F.R. § 41.77(c), wherein a patent owner has filed a request for reopening of prosecution in response to a Board decision, a third party may file written comments in response to the Board's decision, including new prior art, and need not explain why the additional prior art could not have been presented earlier.
  • By amending claims after an appeal to the PTAB from an inter partes reexamination, a patent owner opens the door to permit a third party to challenge all newly amended claims, including previously unchallenged claims.

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