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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

Posted On: Feb. 23, 2012   By: Scott A. McKeown
means plus functionMPF Claim Interpretation Required to Initiate New AIA Proceedings

In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means/step-plus-function” claims.

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone. In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims. Of course, such a mapping is expressly required when appealing a rejection to the Board of Patent Appeals & Interferences (BPAI).

As a result, Patentees will often argue for proper claim interpretation under 112 6th paragraph throughout the reexamination, only convincing the Board as to the proper interpretation of the MPF claims years later. Likewise, by not forcing the issue at the time of the Request, Patentees may only resort to arguing 112 6th at the appeal stage (after failing to distinguish art under the BRI standard); either situation is a waste of Office resources. One such case of a Patentee changing course was illustrated yesterday in Ex Parte EON Corp. IP Holdings LLC. In reversing the examiner’s rejection, the Board held:

To the extent that the Examiner responds to arguments in the Appeal
Brief, the Examiner finds Appellant’s interpretation of the “facilities for”
limitation to be unduly narrow, and that interpreting those limitations to
involve set-up and response associated with a broadcast and acknowledge
mechanism “is not required to reasonably interpret the claims” (Ans. 8).
However, as we find those limitations to be means-plus-function limitations,
that is exactly what we must do, as discussed below.

To the extent that the Examiner responds to arguments in the Appeal Brief, the Examiner finds Appellant’s interpretation of the “facilities for” limitation to be unduly narrow, and that interpreting those limitations to involve set-up and response associated with a broadcast and acknowledge mechanism “is not required to reasonably interpret the claims” (Ans. 8). However, as we find those limitations to be means-plus-function limitations, that is exactly what we must do, as discussed below.

Perhaps recognizing this trouble spot, the USPTO has proposed that such mappings be included in petitions for the new PGR and IPR proceedings of the America Invents Act.

To this end, IPR Rule 42.104 (3) requires:

Where the claim to be construed contains a means-plus function or step-plus-function limitation as permitted under 35 U.S.C. 112, sixth paragraph, 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;

PGR provides the same requirement in Rule 42.204(3).

Going forward, due to their narrower scope, MPF claims  may become an increasingly valued hedge against post grant USPTO patent challenges.

2 Responses to “Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims”

  1. Patentsoldier says:

    This case really isn’t a good example of the need to provide MPF mapping at the request stage. Read the decision. The claims in question fail to explicitly recite means plus function language. As such, it was a debatable issue whether MPF was properly invoked. Indeed, as the decision notes, the examiner is not required to state the claims fails to invoke MPF when applying BRI under such circumstances.

    The patentee only started arguing MPF at the briefing stage (probably based a calcluation to at least get narrowly interpreted claims issued). This case really isn’t a good example of a patentee that argued M+F throughout the reexamination.

  2. Thanks for the comment soldier.

    In my view, the requirement of the appeal brief to include MPF mappings forces an issue to the forefront that is best presented much earlier in the process. When and how the issue is brought up to the Board is largely irrelevant, as once an appeal reaches the Board, resources are wasted.

    However, I do agree that the language at issue is this specific case was less than clear in this regard. In fairness to the PTO I have revised the aspect of the post that could have been interpreted as suggesting the Examiner was blind to the issue.