Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result

Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation. Instead, as outlined by MPEP 21812183, the structure and acts described in the underlying patent specification embody the statutorily mandated scope. That is to say, the structure described in the patent specification as linked to the claimed function is essentially incorporated into the claim. Absent this analysis of the specification for structural support, there can be no structural limits to the claim by which to properly compare the prior art. See MPEP 2183 (C)

Yet, for improperly supported, originally issued means-plus-function claims, a rejection pursuant to 35 U.S.C. § 112 2nd paragraph is not possible in patent reexamination. This is because such a rejection would not be based on “patents and printed publications” as mandated by the patent reexamination statutes. In other words, where a means-plus-function claim examined in patent reexamination lacks any structural support in the patent specification, the USPTO is unable to properly examine the claim. (See my 2010 post on this “Tale of Two Statutes” here)

In a decision last week, the Board of Patent Appeals & Interferences (BPAI) was faced with this statutory conundrum in the inter partes patent reexamination of U.S. Patent 6,446,045. (decision here) The ‘045 Patent is owned by Function Media L.L.C. and is currently asserted against Google Inc. (on appeal to the CAFC).

In the reexamination of the ‘045 Patent all claims were rejected in view of applied art.  However, as the BPAI found the means-plus-function claims unsupported, all of the outstanding rejections were reversed as speculative. Taking the estoppel of inter partes patent reexamination into account (35 U.S.C. § 315), did Google win or lose?

Claim 1 of the ‘045 Patent is representative and recites:

1. A method of using a network of computers to contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller, comprising:

a) providing a media database having a list of available media venues;

b) providing means for applying corresponding guidelines of the media venues;

c) providing means for transmitting said presentations to a selected media venue of the media venues;

d) providing means for a seller to select the media venues; and

e) providing means for the seller to input information;

whereby the seller may select one or more of the media venues, create a presentation that complies with said guidelines of the media venues selected, and transmit the presentation to the selected media venues for publication.

(emphasis added)

The BPAI found that none of the above emphasized means-plus-function elements were supported by the ‘045 Patent specification stating,

[W]e find the claim to be fatally ambiguous. The remedy for this sort of ambiguity is not to read limitations in from the Specification (which is not possible in this case anyway) or to read the claim broadly, as the Examiner attempts, but rather to reject the claim as indefinite.      .     .     .     .

For that reason, if this were a patent application or a claim amended during reexamination, we would enter a new ground of rejection under 37 C.F.R. § 41.50(b) on the basis of 35 U.S.C. § 112, second paragraph, and not reach the rejections under 35 U.S.C. §§ 102 and 103, since they would necessarily be based on speculative assumptions as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

However, in the present case, it would be pointless to enter a new ground of rejection on the basis of indefiniteness because such rejections are beyond the scope of reexamination for issued claims, and as such, the Examiner would be barred by rule from enforcing the rejection. 37 C.F.R. § 1.906(c). Yet, without a discernable claim construction, an anticipation or obviousness analysis cannot be performed since the constructs of 35 U.S.C.§ 112, sixth paragraph, require us to construe the claim “to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112(6). “[T]he ‘broadest reasonable interpretation’ that an examiner may give means-plus-function [or step-plus function] language is that statutorily mandated in paragraph six.” See In Re Donaldson Co. Inc., 16 F.3d at 1194-95.

Consequently, we find that proper disposition of this appeal is to reverse the speculative prior art rejections of record without prejudice to its reinstitution if the patent owner files an amendment or reissue application to cure the indefiniteness. While we understand this disposition leaves a critical issue with the claims unresolved, we cannot ignore the fact that paragraph six does not absolve an applicant or appellant from complying with the remaining paragraphs of 35 U.S.C. § 112. See In Re Donaldson Co. Inc., 16 F.3d at 1195; (citing In re Lundberg, 244 F.2d at 547-48, 113 USPQ at 534 (CCPA 1957)).

(emphasis added)

In the per curiam decision, the Board reversed the outstanding art rejections; typically a clear loss for a patent challenger. Yet, while the Board did reverse all rejections, and did not enter a 112 rejection per se, it very clearly memorialized its fact finding in this regard…but to what end?

The ‘045 Patent is separately on appeal to the CAFC from the parallel district court action. Generally, evidence of an as yet incomplete reexamination would not typically be considered by the Court, and is not yet “final” to trigger estoppel.  Still, there is at least some argument that Congress had envisioned fact based estoppel to be an aspect of inter partes patent reexamination in AIPA 4607. (an uncodified provision). Likewise, even absent a legislative intention, the CAFC is free to take official notice of such a noteworthy result.

With the fact finding clearly evident in the BPAI decision as to deficient 112 support, it is likely that the Patent Owner will be appealing a reversal of all rejections…strange.