February 20, 2017

PTAB Invokes 35 U.S.C. § 112(6) To Construe Patent Claim Term During IPR Proceeding

By Tyson B. Benson, Associate

In a recent decision (IPR2016-01372) to institute an Inter Partes Review (IPR), The United States Patent Trial and Appeal Board (“PTAB”) invoked pre-AIA 35 U.S.C. § 112 paragraph 6 (now 35 U.S.C. § 112(f)) to interpret the claim term “drive module” utilizing means-plus-function analysis as described in Williamson v. Citrix Online, LLC.  Finding that the Specification of U.S. Patent No. 8,659,571 did not adequately support the claimed functionality, the PTAB held that it could not identify the scope or meaning of the claims that including the term “drive module.”

The independent claim at issue recited:

  • 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.

Despite each parties’ failure to address the issue regarding the claim term “drive module,” the PTAB decided to consider the issue because the term “module” is “a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015).

The PTAB identified that the “drive module” element was set forth in a format consistent with traditional means-plus-function claim limitations in that the term “means” is replaced with the term “module” and then recites functional language performed by the “module.”  In this claim, the functional language was “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.”  After identifying the term “drive module” as invoking pre-AIA 35 U.S.C. § 112(6), the PTAB held that the term “module” did not provide any indication of structure because it set forth a “black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.”

More specifically, the PTAB looked to the Specification of the patent at issue to try and identify corresponding structure for the claimed functionality.  The corresponding structure of a means-plus-function limitation must be must be “more than simply a general purpose computer or microprocessor” to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply.  Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

In other words, simply reciting the claimed functionality in the Specification but failing to describe how the computer or processor implements the functionality is not a sufficient disclosure of a corresponding algorithm.  In practice, claimed functionality should be supported by a step-by-step flow diagram along with corresponding description within the Specification in order to support any potential claim terms that could be construed as invoking 35 U.S.C. § 112(f).

The PTAB noted that the Specification included tables and general functional descriptions of various interactions associated with the claimed subject matter, but the Specification failed to include “a well-defined or otherwise recognizable sequence of steps for comparing a gesture signal to a haptic effect signal to produce a gesture difference vector or generating an interaction parameter using the gesture difference vector.”

Since the Specification failed to disclose sufficient structure for the “drive module” limitation, the PTAB was not able to determine the scope and the meaning of claim 12 and its dependent claims since the dependent claims also failed to cure the deficiencies of claim 12.

Implications:

While petitioners cannot challenge a patent utilizing 35 U.S.C. §112 within an IPR proceeding, practitioners should be aware that the PTAB can utilize §112 during claim construction.

Additionally, in a broader scope, practitioners should be mindful to include underlying steps for each recited function when a claim term could be construed as a means-plus-function claim recitation.