Short Summary: Means-plus-function claims found invalid for obviousness.
Case: In Re Teles AG Informationstechnologien, No. 2012-1297 (Fed. Cir. Apr. 4, 2014) (precedential). On appeal from E.D. Tex. Before Dyk, Moore, and Wallach.
Procedural Posture: Plaintiff appealed district Court’s dismissal and transfer of its challenge to an ex parte reexamination. CAFC affirmed.
- Subject Matter Jurisdiction: Patent owners dissatisfied with the determination by Board of Patent Appeals and Interferences in an ex parte re-examination may appeal directly to the Federal Circuit under 35 U.S.C. § 134, but 1999 amendments to the Patent Act eliminated their right to seek district court review under 35 U.S.C. § 145. Any allusion to rights in the latter by 35 U.S.C. § 306 is a drafting error and not within Congress’ intent.
- Means-Plus-Function: The Board correctly construed the claim language “means to produce the control signal” as functional claim language covering the corresponding structure, i.e., “transferring to a line switching or packet-switching transfer to the second end terminal.” Means-plus-function claims “may not adopt a function different form that which explicitly recited in the claim,” and therefore the claims may not be construed as requiring bandwidth monitoring, because it is not expressly required by the claim.
- Claim Construction: The Supreme Court’s decision in Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012) requiring a court to identify the ‘inventive concepts’ embodied by the claimed invention is limited to §101 patentability analysis, and is not a factor for consideration during claim construction.
- Obviousness: Since the Board correctly construed the means-plus-function claim as not including a limitation for bandwidth monitoring of a single transfer in isolation from the network, a prior reference that only disclosed a method of calculating transmission delay based on monitoring an entire network was sufficient to render the claim obvious.