On September 13, 2017, the PTAB, a five-judge panel, granted a petition to institute an inter partes review brought by HTC America, Inc. (“Petitioner”) against Virginia Innovation Sciences, Inc. (“Patent Owner”) regarding U.S. patent number 7,899,492 (“the ‘492 patent”). The panel held that Petitioner demonstrated a reasonable likelihood that it would prevail on all of its challenges to patentability of the ‘492 patent. The ‘492 patent is directed to a mobile terminal that receives multimedia data over a wireless communications network, converts the data to a different format, and provides the converted data to an external display system.

Petitioner challenged the patentability of claims in the ‘492 patent on the basis of 35 U.S.C. §§ 102(e) and 103(a) and proposed constructions for several key terms recited by the challenged claims. Instead of refuting Petitioner’s proposals or offering its own proposals, Patent Owner merely criticized Petitioner’s failure to address “material limitations” that it argued were not present in the § 102(e) prior art.

Though the judges were persuaded by Petitioner’s proffered claim constructions, the panel was divided on the how to treat the “material limitations,” among which were “signal conversion module” and “device interface module. ” The majority found that the term “module” did not constitute a means-plus-function limitation and in so doing, applied the rebuttable presumption from Williamson v. Citrix Online that claim terms lacking the word “means” do not invoke § 112. The majority further applied the doctrine of claim differentiation, reasoning that Patent Owner did not intend for the challenged claims to recite means-plus-function limitations, as some of the unchallenged claims did recite means-plus-function limitations.

The panel found that the broadest reasonable interpretation of “module” includes “any hardware, software, or firmware that performs the functions enumerated in the claims using any number of modules with any names.” Rejecting Patent Owner’s arguments that the functions were distributed differently in the prior art, the panel decided that, in the absence of substantive structural limitations on the modules, it would have been obvious to distribute the recited functions as described in the prior art.

The two dissenting judges would have denied institution, reasoning that the Petitioner failed to provide a claim construction of all means-plus-function terms as required by 37 C.F.R. § 42.104(b)(3) which suggests that petitioners should consider providing both means-plus-function and non means-plus function claim construction positions for claims which potentially will invoke § 112, ¶ 6.