Use of ‘Means’ with term that Designates Structure Does Not Invoke § 112 ¶ 6

Skky, Inc. v. MindGeek s.a.r.l., No. 2016-2018 (June 7, 2017) (Before Lourie, Reyna, and Wallach, J.) (Opinion for the court, Lourie, J.)

Skky appealed for the final written decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding where its patent was found unpatentable as obvious.

Skky’s patent concerns a method for delivering audio and/or visual files to a wireless device. The method purports to allow users to browse, download, and listen to or watch files without the need for hand wired plug-in devices or a computer connection to the internet. The patent was allowed after its claims were amended to recite a “wireless device means.” The Examiner treated this as a means-plus-function term under 35 U.S.C. § 112 ¶ 6.

MindGeek and Playboy filed an IPR petition. The Board determined that § 112 ¶ 6 did not apply because “‘wireless device means’ is not purely functional language, but rather is language that denotes structure.” In the alternative, Skky argued that the “wireless device means” term should be construed to require multiple processors or a specialized processor. The Board found Skky’s alternative argument unconvincing. The claims were held invalid in light of prior art that disclosed a “wireless device means,” specifically a cell phone. Skky appealed.

Skky seeks review of the Board’s conclusion that “wireless device means” does not invoke § 112 ¶ 6 and does not require multiple processors. “[T]he essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). The Court explained, “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 functions.” TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013).

The Court held that the claims did not recite a function or functions for the “wireless device means” to perform and that the term “wireless device” itself is “used in common parlance … to designate structure.” TecSec, 731 F.3d at 1347. Therefore, the Court held that the claims recited sufficient structure and did not invoke § 112 ¶ 6.

The Court found the rest of Skky’s arguments unpersuasive and therefore, affirmed the Board’s decision of unpatentability over the cited prior art.

If a 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 functions, that term will not invoke a “means plus function” analysis under § 112 ¶ 6.

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Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

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