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Skky, Inc. v. MindGeek, s.a.r.l.

§ 112, ¶ 6 Presumption Rebutted Where Claim Associated No Function with “Means” Term

Skky, Inc. v. MindGeek, s.a.r.l., (Fed. Cir. June 7, 2017) (LOURIE, Reyna, Wallach) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR determination of unpatentability. The Board did not err in declining to apply § 112, ¶ 6 to the preamble term “wireless device means.” In the claim, there was no function associated with the “wireless device means,” and the opinion holds that the term denoted the “common parlance” structure of a wireless device. Thus the presumption of means-plus-function treatment was rebutted. The Board also correctly rejected Skky’s argument that the term should be construed to require multiple processors, as inconsistent with the claims and written description.

Substantial evidence supported the Board’s obviousness determination. That the Examiner had considered the asserted references during initial examination did not preclude the Board’s determination. The opinion also rejects Skky’s characterization of what the references taught, and finds substantial evidence to support a motivation to combine, noting that one reference had specifically called out combination with “existing FM communication systems” as “particularly attractive because it can be implemented simply and inexpensively.” Op. at 13. Per Ethicon, 844 F.3d 1344 (Fed. Cir. 207), the Board was under no obligation to credit Skky’s proffered statements about objective indicia.

The Board also did not err in declining to strike MindGeek’s reply brief. To the extent the brief included new arguments, Skky had notice and an ability to respond, including its actual filing of a surreply.

KEYWORDS: MEANS-PLUS-FUNCTION (NO); OBVIOUSNESS (YES); INTER PARTES REVIEW; MOTIVATION TO COMBINE (YES); OBJECTIVE INDICIA OF NONOBVIOUSNESS; SKKY, INC.; MINDGEEK, S.A.R.L.