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Board Erred by Treating Claimed “Receiver” As Unsupported “Means Plus Function”
EnOcean GmbH v. Face International Corp., No. 2012-1645, 2014 U.S. App. LEXIS 1880 (Fed. Cir. Jan. 31, 2014) (Prost, J.). Click here for a copy of the opinion.
In 2010, the Board of Patent Appeals and Interferences declared an interference between EnOcean, owner of the rights to a pending application, and Face, the real party of interest in an issued patent claiming a self powered switch. The Board agreed with Face and treated several claims reciting a “receiver” as means-plus-function claims, although they did not recite the “means for” language. The Board concluded that these and other means-plus-function claims could not claim priority to EnOcean’s earlier PCT application—which antedated one of the obviousness references—because it found the specification did not support the “means for receiving” limitations. Ultimately the Board found all of EnOcean’s claims invalid as obvious.
The Federal Circuit disagreed with the Board. First, Face failed to overcome the presumption against invoking § 112 ¶ 6 based on EnOcean’s use of the term “receiver.” The Court found evidence, including scientific literature, expert declarations, and a factual finding by the Board, that the term “receiver” “conveys known structure” to those of skill in the art. Second, the earlier PCT provided sufficient detail for one skilled in the art to conclude that EnOcean was in possession of the invention as of the claimed priority date. The PCT only contained a single reference to a receiver (“[T]he switches . . . emit . . . radio frequency telegrams which are received by a single receiver . . . .”). However, this element was “well known as of the filing date,” so the inventors did not need to provide “cumbersome repetitions of what [was] already known and readily provided by the reference.” Slip op. at 11 (quoting Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1324 (Fed. Cir. 2010)). The PCT antedated a key reference, thereby eliminating it as prior art and overcoming the Board’s finding of obviousness. Thus, the Board’s ruling was vacated-in-part, and the Court remanded the case for further consideration of the interference proceeding.