September 16, 2013

Detailed Means-Plus-Function Analysis Underlies Board’s Decision to Institute Six Related IPR Trials

By Matthew L. Cutler, Principal

Six PersonalWeb Technologies patents were thrown into inter partes review trials by EMC Corporation in cases styled as EMC Corp. v. PersonalWeb Tech., LLC (IPR2013-00082 through IPR2013-00087), involving U.S. Pat. Nos. 5,978,791; 6,415,280; 7,945,544; 7,945,539; 7,949,662; and 8,001,096.

The six patents each relate to a data processing system that identifies data items, such as data files or records, by using an identifier which depends on all of the data in the data item and only on the data in the data item. This implies that the identity of a data item is said to be independent of its name, origin, location, or address – a feature that is useful in identifying and subsequently eliminating duplicate copies of data items. The system involves having a “True File registry,” into which all data items are assimilated, with duplicates being eliminated.

After describing the cited art in the first case of the series, the Board began in all six cases with the customary claim construction analysis. Of note in the Board’s ruling was its construction of “data” and “data item.”  Relying on CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), the Board noted that, “[i]n the absence of evidence to the contrary, we must presume that the use of different terms in the claims connotes different meanings.”  See, e.g., 82 Order at 15.

Also of note was the Board’s treatment of the means-plus-function claim language from the subject claims. In particular, the Board found that “[t]he corresponding structure of a means-plus-function limitation…must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming.”  The Board then conducted a detailed analysis of the specification to determine what structure corresponded to the claimed function.

Finally, in a situation common to the related cases, the Board embarked on a lengthy discussion as to whether some of the prior art references cited by Patent Challenger were “printed publications” under 35 U.S.C. §102(b). For example, Patent Owner argued that one of the references was not a printed publication because there was no evidence to indicate that it could have been located prior to the critical date.  See, e.g., 84 Order at 18.  The Board did not agree, noting that whether a given reference is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.  Id. at 19.  In this case, because the title page of the reference clearly showed that the reference was posted on a publicly accessible site well known to those interested in the art prior to the critical date, the reference is to be considered a printed publication.  The Board distinguished this type of factual scenario – where the reference indicated when it was created and publicly disseminated – versus the scenario presented in Synopsis, Inc. v. Mentor Graphics Corp., wherein a brochure, without any such indication of public availability, was at issue.

In the end, the Board granted all six of Patent Challenger’s petitions for inter partes review as to all challenged claims based on extensive obviousness and anticipation grounds.