July 7, 2017

PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

By Bryan K. Wheelock, Principal

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and subsequently vacated and remanded the obviousness rejections based on that limitation.

The IPR challenged 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.  The Federal Circuit noted that while the Board correctly identified “arrangement for reactivating the link” was a means plus function element, it failed to properly construe that limitation.  The Board rejected IPCom’s proposed three-step algorithm allegedly disclosed in the ’830 specification for performing the “arrangement for reactivating the link” function, but the Board failed to identify what it believed to be the correct algorithm from the specification.  That omission led to an incomplete construction of the claim limitation and is incompatible In re Donaldson.  §112, ¶ 6 [now 112(f)] applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.  The Federal Circuit said that the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.

The Federal Circuit vacated the Board’s claim construction of the “arrangement for reactivating the link” limitation, and remanded for the Board to identify the corresponding algorithm (if any) in the specification in the first instance.  The Federal Circuit further vacated the determination of obviousness because the Board never identified any algorithm for the “arrangement for reactivating the link” limitation.  The Board further erred by failing to evaluate whether the prior art disclosed that algorithm (or its equivalents).