By Scott A. McKeown
| January 17, 2013
Failure to Focus Means Plus Function Debate in Patent Reexamination
Last week in In re Avid Identification Systems Inc., the CAFC affirmed the USPTO's rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination. Of particular note in the appeal was the proper construction of "means for storing." The Patentee argued that the "means for storing" language invoked 35 U.S.C. § 112 6th paragraph (now known as 35 U.S.C. § 112(f)), and as such, required particular structure of the specification. The USPTO took the position that, since this claim construction position was not seasonably raised in the briefing to the PTAB, nor was the required claim mapping presented in the opening brief as required by 37 C.F.R. § 41.37(c)(1)(v), that the argument was waived for purposes of appeal.
In a stinging dissent, Judge Clevenger found the PTAB's practice to be "random" as it relates to the proper examination of means-plus-function (MPF) claims. He was particularly disappointed that the PTO chose to "hide behind" 37 C.F.R. § 41.37(c)(1)(v), labeling such behavior a public detriment. (decision here)
The fact pattern in Avid is troubling on many levels. Not only is such a practice a public detriment as to predictability, but interpreting MPF claims to have a broader scope is arguably an ultra vires action in the context of patent reexamination. And, above all else, a simple rule change would avoid most such issues from reaching the appellate level.
As explained by Judge Clevenger,
The term “a means for permanently storing data” is undeniably a means-plus-function limitation. The question in this case is whether the Patent Office (“PTO”) may use an unaltered broadest reasonable interpretation standard in examining means-plus-function claims, or if these claims must always be interpreted in accordance with 35 U.S.C. § 112, ¶ 6. The answer is easy. 35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure (“MPEP”), and past PTO practice are all in agreement: under § 112, ¶ 6, “the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189) (en banc).
Judge Clevenger highlighted the impact on the public in adopting a broader read of such a claim, explaining:
In this case, the Examiner allowed claim 13 without explicitly interpreting the claim under § 112, ¶ 6. Meanwhile, a district court found that there was no support in the specification for the limitation “means for decoding a password..." in the same claim. Allflex USA Inc., v. AVID Identification Systems, Inc., Case No. 5:06-cv-1109, ECF No. 469 at 15 (C.D.Ca. Feb. 17, 2010) (Claim Construction Order). Had the Examiner properly considered the requirement that the specification disclose structure corresponding to the “means” claimed, this inconsistent result could have been avoided.
The danger in ignoring the required construction is clear. That is to say, the public would undoubtedly follow the guidance of Donaldson in interpreting such a text book MPF element, perhaps believing themselves free of liability based on such an analysis. Thereafter, the scope of the claim may be treated in patent reexamination quite differently; lending weight to a Patentee assertion of a broader scope. Yet, broadening of an originally issued claim is precluded by statute in patent reexamination. 35 U.S.C. § 305. I am not sure the PTO can ignore such a fundamental issue of claim construction without running afoul of 305.
In this case it may be that the Patentee deliberately ignored the requirement of Rule 41.37 during appeal, preferring a broader interpretation for infringement purposes. Once losing at the PTAB, the interpretation was switched to the narrower read at the time of rehearing in an attempt to save the patent. It is entirely understandable that the PTO would choose to deny this argument so late in the game. The fault lies not with the PTAB, but in allowing such claims to be presented in a request for patent reexamination in the first instance without a counterpart rule akin to 41.37. This oversight was corrected for the new post grant trial proceedings of the AIA, which require such a mapping in the petition. In this case, the reexamination requester provided no such mapping or explanation as to the "means for" language. As a result, the issue was raised for the first time in the request for rehearing.
While means plus function claiming has fallen in popularity in recent years, many older patents are now the subject to patent reexamination. Also, it appears the USPTO is attempting to encourage means-plus-function claim drafting for software related patents. This problem is ongoing and not at all insignificant.
As I have suggested previously, a simple rule requiring the same claim mapping from patent reexamination requests as required on appeal (and now, the new post grant petitions) would focus the issue at the outset of the process. The majority in Avid noted that the presumption triggered by the "means for" language is only triggered when raised by the Patentee, yet, it is also a presumption relied upon by the public.