Takeaway: There is no exemption from Petitioner’s requirement to identify corresponding structure for means-plus-function limitations under 37 C.F.R. § 42.104(b)(3), even for claims that may have been construed previously in a related court or administrative matter.

In its Decision, the Board denied institution of a Petition requesting inter partes review of claims 1, 2, 4, 7-10, and 15 of the ’576 patent. Claim 1 was the only independent claim challenged. Petitioner challenged the claims as obvious over Kahn, Linn, and Shear. The ’576 patent “generally relates to the distribution and usage rights enforcement of digitally encoded works.”

The Board first discussed certain “mandatory notices” that a petitioner must include as part of its petition. See 37 C.F.R. § 42.8(a)(1). Specifically, the requirement to “[i]dentify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” This includes judicial matters in federal court and administrative matters including “every application and patent claiming, or which may claim, the benefit of the priority of the filing date of the party’s involved patent or application as well as any ex parteand inter partes reexaminations for an involved patent.” Here, Petitioner identified several lawsuits and petitions for inter partes reviews of the ’576 patent, but failed to comply with the requirement because the Petition did not identify upfront a related IPR matter that resulted in a final written decision regarding some claims of the ’576 patent, although the Petition references the IPR elsewhere.

In a footnote, the Board faulted Petitioner for repeatedly and “erroneously” citing Linn’s exhibit number and naming the Petition as “one example of a poorly presented record by Petitioner.” As an example, “the 474-page declaration [] includes voluminous information not relevant to this Petition and which contains numerous internal citations.” “Yet another example is Petitioner’s filing of sixty-three exhibits, forty-six of which are not cited in the Petition.”

The Board then addressed claim construction. Independent claim 1 recites several limitations that presumptively are means-plus-function limitations. Petitioner did not rebut the presumption and failed to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Instead, Petitioner merely provided that the Board had construed these means-plus-function elements in the previous IPR proceeding and proposed—without providing—that the Board “use” these constructions “where available.”

The Board held that these “statements do not fulfill Petitioner’s obligation to identify the corresponding structure” for two reasons: (1) the rules require “the petition set forth” the identification of the corresponding structure; and (2) in the relied-upon decision from the IPR, the Board denied institution with respect to claim 1 because the previous petitioner also “did not identify the correct structure corresponding to each means-plus-function limitation recited in claim 1.” It was also unavailing for Petitioner to merely state that “[i]n ongoing litigation, Patent Owner has identified allegedly corresponding structures for each [means-plus-function limitation recited in claim 1].” This statement did not fulfill Petitioner’s obligation for two reasons: (1) “it is the Petition, and not an external document, that must set forth an identification of corresponding structure”; and (2) “by requiring an identification of the corresponding structure be set forth in the Petition, the rule squarely places the requirement on the Petitioner,” not Patent Owner. Finally, later in the Petition, it was unavailing to merely reference “what Petitioner allegedly agreed to in district court,” without more.

In sum, “Petitioner does not identify the specific portions of the specification of the ’576 patent that describe the structure corresponding to each recited function of the means-plus-function limitations of claim 1,” which are incorporated into the challenged dependent claims. However, “[t]here is no exemption from the requirement to identify corresponding structure for means-plus-function limitations under 37 C.F.R. § 42.104(b)(3) for claims that may have been construed previously in a related matter.” Thus, by failing to identify corresponding structure or constructions, the Petition does not show how the claims are to be construed and how they are allegedly unpatentable. The Petition was therefore denied.

Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00456

Paper 9: Decision Denying Institution of Inter Partes Review

Dated: June 15, 2015

Patent: 7,269,576 B2

Before: Michael R. Zecher, Michael J. Fitzpatrick, and Kevin W. Cherry

Written by: Fitzpatrick

Related Matters: ContentGuard Holdings, Inc. v. Amazon.com, Inc., Case No. 2:13-cv-01112 (E.D. Tex.); Google Inc. v. ContentGuard Holdings, Inc., Case No. 2:14-cv-0498 (N.D. Cal.); ContentGuard Holdings, Inc. v. Google Inc., Case No. 14-cv-0061 (E.D. Tex.); IPR2015-00452 through -00455; IPR2013-00139