Summary: CAFC rules on claim construction and priority claim.
Case: Enocean GMBH v. Face Int’l Corp., No. 2012-1645 (Fed. Cir. Jan. 31, 2014) (precedential). On appeal from PTAB in Patent Interference No. 105,755. Before Radar, Lourie, and Prost.
Procedural Posture: Applicant appealed the Board’s decision finding the claims obvious. CAFC vacated in part and remanded.
- Claim Construction: The Board erred in finding that the term “receiver” invoked means-plus-function under 35 U.S.C. § 112, ¶6. First, the lack of the word “means” entitles the claims to a presumption that they are not means-plus-function claims despite other claims expressly reciting “means” language and similar functional elements. Second, the term “receiver” connotes a sufficiently definite and known structure to those of skill in the art based on scientific literature and expert declarations. Therefore, the CAFC concluded that the term “receiver” is not merely a “black box that performs a recited function” and, thus, does not invoke 35 U.S.C. § 112, ¶6.
- Priority Claim: The Board erred in finding that means-plus-function claims (“means for receiving” claims) were not entitled to claim priority to an earlier foreign application. The Board applied an incorrect standard of requiring the earlier application to “expressly describe the structure of the receiver.” In contrast, the mere recitation of the term “receiver” in the earlier application demonstrated that a person of ordinary skill could understand the bounds of the invention because the structure of a receiver was well known as of the filing date. Therefore, to claim priority to an earlier application, inventors are not obligated to describe well known structures in that application. This allows patents to remain concise statements of what is new, not cumbersome repetitions of what is already well known.