In IPCom GMBG & Co. v. HTC Corp. (Fed Cir. 2017), the Federal Circuit vacated and remanded a finding of obviousness in an Inter Partes Reexamination because the PTAB’s claim construction violates boundaries of BRI of the claims. IPCom GMBG & Co. v. HTC Corp. (Fed Cir. 2017). The court relied on In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc), which stated that 35 U.S.C. § 112 ¶ 6 (pre-AIA) “sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of ‘reasonable interpretation,’” and “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” Id. at 1194-95.
IPCom is the owner of U.S. Patent No. 6,879,830 (‘830 patent), “which describes and claims a method and system for handing over a mobile phone call from one base station to another base station.” Slip op. at 2. Independent claims 1, 18, 30, and 34 of the ‘830 patent contain “an arrangement for reactivating the link with the first base station” – a feature designed to reduce the chance of interrupted service when a mobile phone must perform a handover.
After IPCom sued HTC for patent infringement of the ‘830 patent, HTC instituted an inter partes reexamination. During the first round of review, the Examiner concluded that the claims were patentable, but the Patent Trial and Appeal Board (PTAB) issued a new ground of rejection. During the second round of review, IPCom amended its claims, but the PTAB sustained its rejection.
On appeal, the Federal Circuit agreed with IPCom that the PTAB’s “obviousness rejections were based on a flawed claim construction, because the board never identified the structure in the patent specification that corresponds to the ‘arrangement for reactivating the link’ means-plus-function claim limitation.” Slip op. at 3. In a related district court proceeding, HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270 (Fed. Cir. 2012), the “arrangement for reactivating the link” limitation was found to be a means-plus-function limitation, and while the PTAB recognized this ruling, it failed to properly construe that limitation.
The Federal Circuit stated that § 112 ¶ 6 required the PTAB to perform a two-step analysis to construe the “arrangement for activating the link” limitation: (1) identify the particular claimed function and (2) look to the specification and identify the corresponding structure, material, or acts that perform that function. Instead of following this two-step analysis, the PTAB simply rejected IPCom’s proposed algorithm for performing the “arrangement for reactivating the link” function, but the PTAB failed to identify what it believed to be the correct algorithm. “Like Donaldson, the Board here impermissibly treated the means-plus-function limitation in its patentability analysis as if it were a purely functional limitation,” and “[b]ecause it never identified any algorithm for the ‘arrangement for reactivating the link’ limitation, the Board also erred by failing to evaluate whether the prior art disclosed that algorithm (or its equivalents).” Slip op. at 13-14. On remand, the PTAB will need to correctly construe the “arrangement for activating the link” means-plus-function limitation, and evaluate whether the prior art discloses this limitation.