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IPCom GmbH v. HTC Corporation

PTAB’s Failure to Identify Specific Algorithm for Means-Plus-Function Limitation Leads to Vacatur/Remand

IPCom GmbH v. HTC Corp., (Fed. Cir. July 7, 2017) (Prost, Clevenger, CHEN) (PTAB) (3 of 5 stars)

Fed Cir part-affirms, part-vacates/remands IPRx obviousness determination. The Board erred in its interpretation of a means-plus-function limitation appearing in several claims. Specifically, the Board erroneously failed to identify the algorithm in the specification corresponding to the claimed means. Per Donaldson, 16 F.3d 1189 (Fed. Cir. 1994) (en banc), the application of the “broadest reasonable interpretation” standard is not a justification for construing a means-plus-function limitation as encompassing any means capable of performing the function. The Board rejected the algorithm tendered by patent owner IPCom, but did not identify an algorithm of its own. On remand, it should identify the appropriate algorithm. Obviousness determinations for claims affected by this issue are vacated.

The Fed Cir affirms the Board’s remaining determinations. For those claims unaffected by the issue above, substantial evidence supported the Board’s obviousness determinations. The opinion discusses the references, and the proof of motivation to combine.

The Board did not err in reviewing the patentability of certain claims. These claims had initially been part of the IPRx, but the Board did not mention them when it issued a new ground of rejection following an initial determination of patentability by the Examiner. Following the Board’s decision, IPCom had reopened prosecution and had amended the claims in question. On that basis, there was no error in the Board exercising jurisdiction to consider HTC’s challenge to the claims when the matter returned to the Board.

KEYWORDS: MEANS-PLUS-FUNCTION; INTER PARTES REEXAMINATION; JURISDICTION; ALGORITHM