In Askeladden LLC v. iSourceloans LLC, the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review of claims 1-20 of U.S. Patent No. 7,340,435, holding that the petitioner Askeladden had not identified sufficient structure for two means-plus-function claim limitations. Without sufficient structure identified, the PTAB determined that it could not construe the challenged claims and denied inter partes review accordingly.
The ’435 patent is generally “directed to a system and method for processing mortgage loan data.” Independent claim 1, the only independent claim challenged by the petitioner, was written in means-plus-function form. The PTAB focused on two particular means-plus-function limitations as dispositive: (1) “means for reviewing the loan application data to determine completeness” and (2) “means for completing the loan application whenever loan application data is incomplete by contacting the loan originator.”
Under well-established Federal Circuit precedent, in computer-implemented inventions that use means-plus-function claiming, “the structure disclosed in the specification [must] be more than simply a general purpose computer or microprocessor.” Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, No. 2014-1392, slip op. at 7 (Fed. Cir. May 6, 2015) (quoting Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). As the structure corresponding to the “means for reviewing” and “means for completing” limitations in the challenged claims, the petitioner identified portions of the specification discussing “a computerized system with program software operable to perform” certain functions.
The PTAB found two flaws with the petitioner’s position. First, the PTAB determined that the cited passages spoke in general terms and did not adequately tie the claimed function to the disclosed structure: “The passages . . . discuss the computer components generally employed in various portions of the ’435 patent’s computer system, but are not linked to the recited ‘reviewing” and “completing’ functions.” Second, the PTAB noted the rule that “the corresponding structure . . . must be more than simply a general purpose computer,” and concluded that “petitioner has failed even to establish that the structure corresponding to the recited ‘reviewing’ and ‘completing’ functions is a general purpose computer.” For these reasons, the PTAB was unable to construe the challenged claims and denied inter partes review.
Although the petitioner here lost its bid to challenge the claims at the PTAB, denial decisions like this may prove valuable in related district court litigation. For example, the PTAB’s determination that it cannot construe the asserted claims may support an argument that the claims are indefinite under 35 U.S.C. § 112 for the very reasons articulated by the PTAB.
Askeladden LLC v. iSourceloans LLC, IPR2015-00134 (PTAB Apr. 15, 2015) (Rice, Daniels, & Plenzler, JJ.).