EnOcean GmbH v. Face International Corp.
Reversing the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences, the U.S. Court of Appeals for the Federal Circuit held that EnOcean’s patent claims for a self-powered wireless switch did not invoke Section 112, ¶ 6 and were disclosed over a year before the prior art relied on by the Board for its obviousness finding. EnOcean GmbH v. Face International Corp., Case No. 12-1645 (Fed. Cir., Jan, 31, 2014) (Prost, J.).
EnOcean owns the rights to a U.S. patent application that contains claims to a self-powered switch which can be used to turn on and off lights, appliances and other devices without a battery or electrical connection. The inventors originally filed a German application disclosing the new switch on May 24, 2000; on May 21, 2001 the inventors filed a PCT application with similar disclosures.
Based on EnOcean’s formal suggestion, the Board declared an interference on June 25, 2010 between EnOcean and a patent owned by Face. Face’s patent also claims a self-powered switch. The Board found the Face patent claims obvious in light of a combination of prior art references, including a PCT application published in September 2001. The Board then applied a presumption (operable in interference practice) that EnOcean’s claims would be unpatentable for the same reasons. EnOcean’s sole argument for rebutting the presumption required a determination that it could benefit from the May 2000 German application and May 2001 PCT application. The Board rejected EnOcean’s argument, finding that the disclosure of “receiver” in the German application did not support the “means for receiving” limitation in EnOcean’s U.S. application. The Board went on to find that various claims were means-plus-function claims despite the lack of “means for language.” The Board found that EnOcean’s claims defined “receiver” solely in terms of functional language and creating no difference between a “receiver” and “signal receiving means.” As a consequence, the Board did not ascribe priority to the receiver claims, finding all of EnOcean’s claims obvious. EnOcean appealed.
The Federal Circuit reviewed the receiver claims and the means-plus-function claims and analyzed whether the Board erred in finding that the receiver claims invoked § 112, ¶ 6, as well as whether the Board erred in refusing to grant priority back to the German and PCT applications. The Federal Circuit reversed, concluding that (in terms of the claim term in dispute) the absence of the word “means,” coupled with the term “receiver” “presumptively connotes sufficiently definite structure to those of skill in the art” and to avoid application of § 112, ¶ 6 to the claim element. The Court went on to find that “a person of ordinary skill in the art could understand the bounds of the invention merely by reading the term receiver, which is present in EnOcean’s German and PCT applications.” Accordingly, EnOcean was entitled to claim the benefit of the German and PCT application priority dates—and thereby defeat the September 2001 PCT application the Board relied on as a basis for its obviousness conclusion.