On June 30, 2014, a panel of administrative patent judges of the Patent Trial and Appeal Board (the “Board”) denied institution of Inter Partes review brought by Panel Claw, Inc., for failing to properly propose a construction for a means-plus-function limitation. According to the Rules for Inter Partes review (i.e., 37 C.F.R. § 42.104(b)(3)), where a challenged claim contains a means-plus-function limitation, “the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” (emphasis in Board decision). In the patent-at-issue, independent claim 1, included the limitation “means for regulating the temperature of said photovoltaic modules.” (emphasis added). Following established precedent, the Board held this limitation to be presumptively governed by 35 U.S.C. § 112, ¶ 6 (i.e., a means-plus-function limitation). SeeInventio AG v. ThyssenKripp Elevator Corp., 649 F.2d 1350, 1356 (Fed. Cir. 2011) (“The use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term.”) Thus, pursuant to the Rules and § 112, ¶ 6, the Board held that (without rebutting the presumption), petitioner must identify the function of the means-plus-function limitation and “the corresponding structure described in the specification and its equivalents.” Instead, petitioner failed to provide any rebuttal to the presumption that the term-at-issue is governed by § 112, ¶ 6 and only proposed that the term be construed as “solely functional” without proposing a corresponding structure. Accordingly, the Board found that because petitioner failed to propose a corresponding structure for the means term-at-issue, its petition as to independent claim 1 (and its dependents) “is denied for this reason alone.”
The Board’s decision in Panel Claw highlights the significance of fully addressing means-plus-function limitations (or any limitation that includes “means” language) in an Inter Partes review petition – either by, if appropriate, rebutting the presumption that the term is governed by § 112, ¶ 6 or by proposing a recited function and corresponding structure for the term.
Panel Claw, Inc. v. Sunpower Corp., IPR2014-00386 (PTAB June 30, 2014).