IPCom GmbH & Co. v. HTC Corporation


Docket No. 2016-1474 (PTAB No. 95/001,192)

PROST, CLEVENGER, CHEN
July 7, 2017

Brief summary: Board’s claim construction of means-plus-function claims (the Board did not ““look to the specification and interpret that language in light of the corresponding structure”) and conclusions of obviousness vacated and remanded.

Summary: IPCom appealed Board reexamination (RE) decision that claims of its US 6,879,830 relating to a method and system for handing over a mobile phone call from one base station to another were obvious in view of various combinations of references (“McDonald”, “Anderson”, “GSM”, and “PACS”). The RE went through two rounds; in the first the Examiner found the claims to be patentable but HTC appealed to the Board which issued new grounds of rejection. In the second, the Board found IPCom’s amended claims obvious. IPCom unsuccessfully argued that the Board lacked jurisdiction to review the Examiner’s patentability determination of the amended claims (“[T]he Board properly considered HTC’s challenge…after IPCom had reopened prosecution and amended those claims.”) IPCom also argued “the Board failed to conduct a proper claim construction of the ‘arrangement for reactivating the link’ claim limitation” and the FC panel agreed. That limitation was previously determined by the FC to be a means-plus-function limitation (HTC, FC 2012). “[T]he Board recognized that ruling” but “failed to properly construe” it by rejecting “IPCom’s proposed three-step algorithm allegedly disclosed in the ‘830 specification” and failing “to identify what it believed to be the correct algorithm”, leading to “an incomplete construction of the claim limitation…incompatible with our holding in In re Donaldson” (FC 1994 (“the agency must follow the plain language of § 112 [para.] 6” and “look to the specification and interpret that language in light of the corresponding structure, or acts described therein, and equivalents thereof…whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”)) The Board was required “to perform a two-step analysis”: 1) “identif[y] the particular claimed function”; and, 2) “look[] to the specification and identif[y] the corresponding structure, material, or acts that perform that function” (“It was not enough for the Board to rejected the individual steps of IPCom’s proposed three-step algorithm…Like Donaldson, the Board here impermissibly treated the means-plus-function limitation in its patentability analysis as if it were a purely functional limitation.”) Based on this error, the FC panel vacated and remanded “the Board’s finding of obviousness of claims 1, 18, 30, and 34, and their corresponding dependent claims.” Regarding obviousness, the FC panel first concluded the Board properly considered new prior art after IPCom’s amendment of its claims (§ 41.77(c); Proxyconn, FC 2015). The FC panel also found that, together, the prior art disclosed each of the limitations of the disputed claims and that there would have been a motivation to combine the same, except for the “arrangement for reactivating the link” limitation. It therefore vacated and remanded the Board’s findings on that limitation.

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