EnOcean GmbH v. Face International Corp.

Docket No. 2012-1645

Panel TBD
January 31, 2014

Brief Summary: Board decision that claim term “receiver” did not invoke § 112, ¶ 6 because “those skilled in the art would understand the structural significance of that claim language.” Sufficient structure for “signal reception means” found in priority applications.

Summary: EnOcean appealed Board finding that its claims: 1) invoke § 112, ¶ 6 (means-plus-function) by the term “receiver” in “a signal receiver for receiving a first…signal” and “a receiver adapted to receiving…a telegram”); and, 2) are not entitled to claim priority to German and PCT applications. The opinion first explained “that the use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim” (citing Inventio AG, FC 2011). And while a claim that does not recite “means” is presumed not to invoke § 112, ¶ 6, that “presumption can be overcome if the challenger demonstrates that ‘the claim term fails to recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” “Ultimately”, the opinion stated, “whether claim language invokes § 112, ¶ 6 depends on how those skilled in the art would understand the structural significance of that claim language.” Face argued that the term “‘receiver’ is defined only in terms of the function that it performs (i.e., receiving), not its structure” (citing Blackboard, FC 2009) but the FC panel disagreed (“The term ‘receiver’ (i.e., the absence of the term means) presumptively connotes sufficiently definite structure to those of skill in the art…scientific literature demonstrating that the term ‘receiver’ was well understood in the art….”) EnOcean also had to establish its claims are entitled to an earlier priority date (based on a German and a PCT application) to overcome prior art. The Board found, and EnOcean agreed, that certain claims were in means-plus-function form (“signal reception means”) but also that the PCT and German applications do not “expressly describe the structure of the receiver”. Noting that their conclusion the term “‘receiver”…connotes enough structure to avoid invoking § 112, ¶ 6 does not necessarily mean that we must conclude the disclosure of ‘a single receiver’ connotes enough structure to support EnOcean’s means-for-receiving claims for purposes of claiming priority”, the opinion “[n]ontheless” concludes that it did (“Sufficient structure must simply ‘permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation’ so that he may ‘perceive the bounds of the invention’” (citing In re Aoyama, FC 2011)). Accordingly, the claims were found to be entitled to the priority claims.

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