PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO's PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua sponte, noting that “the parties fail[ed] to address the issue.” It further held that it could not discern the scope and meaning of the claims with that term since the functions associated with the “drive module” were not properly supported by the flowcharts in the Specification.

Section 112 deficiencies cannot be challenged by the petitioner in an IPR. However, in a decision to institute an IPR, the PTAB has to construe the claims, which naturally involves resolving § 112 issues.

In its decision to institute IPR against US Patent No. 8,659,571, the PTAB found that the phrase “drive module” in claims 12-18 invoked §112(b) under Williamson v. Citrix Online, LLC, even though the term “means” was not explicitly recited in the claims. The IPR was instituted on other claims that did not have the “drive module” recitation.

Claim 12 recites:

A haptic effect enabled system comprising:

a haptic output device;

a drive module electronically coupled to the haptic output device for receiving a first gesture signal, receiving a second gesture signal, and generating a dynamic interaction parameter using the first gesture signal and the second gesture signal; and

a drive circuit electronically coupled to the drive module and the haptic output device for applying a drive signal to the haptic output device according to the dynamic interaction parameter.

The PTAB found that the Specification defines the “drive module” “in purely functional terms” in that it “does not impart any structural significance to the term.” There is no “explicit disclosure in the Specification that indicates that the ‘drive module’ is a hardware component or circuitry or any other physical entity having a sufficiently definite structure.”

A purely functional claim is not fatal, however. Thus, the PTAB looked at whether the “drive module” recitation was sufficiently supported in the Specification. “If the function is performed by a general purpose computer or microprocessor, the specification, in general, must disclose the algorithm that the computer performs to accomplish that function.” “Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps.”

While the Specification discloses the claimed steps and has multiple flowcharts, the PTAB nevertheless held that the Specification “fails to disclose sufficient structure corresponding to the ‘drive module limitation.’” The PTAB reasoned, “[The Specification] does not disclose a well-defined or otherwise recognizable sequence of steps for [each of the individual steps recited in claim 12].”

The PTAB concluded that it could not determine the scope and meaning of claims 12-18.

Lessons for Practice

Each means-plus-function claim recitation needs to be supported by structure or a sequence of steps, and preferably both. The patent at issue provides written description support for each function and listed each function in a flowchart, yet the PTAB held that the claims could not be construed because the specification did not list the underlying steps for each recited function.

This case also serves as a reminder that an IPR petition and response need to spend some time on claim construction, including anticipating potential §112 issues. While the petitioner can’t challenge the patent on §112 grounds, the PTAB can.