Expert Agency Shown Deference in Matters of Claim Scope
While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues. For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment. And recently, a plaintiff in the District of Utah leveraged a PTAB finding to obtain a favorable outcome regarding indefiniteness on summary judgment.In Vivint, Inc. v. Alarm.com Inc., (here) the court denied defendant Alarm.com’s motion for summary judgment that certain claims were indefinite for reciting a means-plus function term under 35 U.S.C. § 112 ¶ 6 without disclosing sufficient structure that corresponds with the claimed function.
After plaintiff Vivint filed its patent infringement complaint, the court stayed the case when Alarm.com filed an IPR challenging the validity of one of the patents at issue. In its petition, Alarm.com argued that the claim term “message generating mechanism” “should be treated as a means-plus function claim term because it is a purely functional recitation and does not recite definite structure.” The PTAB instituted review, but disagreed with Alarm.com’s position; instead, the Board sided with Vivint and found that “the plain language of each of the challenged independent claims . . . recited [that a] message generating mechanism is part of the recited interface unit and is not merely a recitation of function without corresponding structure.” That is, the Board found that the interface unit was sufficient structure, explaining:
[i]t is clear from the plain language of each of the challenged independent claims . . . that the recited message generating mechanism is part of the recited interface unit and is not merely a recitation of function without corresponding structure. As Patent Owner points out, each of the challenged independent claims also recited a structural relationship between the message generating mechanism and other structural elements, including sensors, remote equipment, and servers, in addition to the interface units. Because we determine that the ordinary meaning of this term as a message generating component of the recited interface unit is clear, however, we conclude that it is unnecessary to provide any further construction of message generating mechanism at this stage of the proceeding.
Ultimately, the Board affirmed this finding in a final written decision and noted that while it agreed with Vivant that the term did not recite means-plus function, it disagreed as to why. (This was despite the fact that the disputed grounds of unpatentability did not meaningfully depend on the outcome of this issue)
Over two years later back at the district court, Alarm.com then moved for summary judgment that the claims reciting a “message generating mechanism” were invalid for indefiniteness. Vivint and Alarm.com both submitted expert declarations in support of their positions. But Vivint’s expert’s declaration did not mirror the position it took before the Board that the specification describes the structure; rather, “Vivint’s expert, at least to some extent, took the same position that the PTAB took in its institution decision.” The court rejected Alarm.com’s argument, denied summary judgment, and found for Vivant, at least in part, because “Vivant’s position is buttressed by the PTAB. Again, in its institution decision, the PTAB expressed its opinion that the claim terms recited such sufficient structure that the terms were not subject to construction under 35 U.S.C. § 112 ¶ 6.”
PTAB claim construction determinations are increasingly a first-in-time determination relative to many district court timelines. With the PTAB switch to Phillips, these records are increasingly leveraged outside of the agency, and where such records may not be fully developed given the absence of infringement issues at the PTAB, petitioners should be judicious in choosing their claim construction battles.