Inter Partes Review Terminated Where PTAB Found That Challenged Claims Were Indefinite

by Jeffer Mangels Butler & Mitchell LLP

Petitioner, BlackBerry Corporation and BlackBerry Limited ("Blackberry"), filed a petition on October 30, 2012, for an inter partes review ("IPR") of claims 1-12 of US Patent No. 6,871,048 ("the ?048 patent"). On March 18, 2013, the Board instituted trial on claims 1-12 of the ?048 patent based on all grounds of unpatentability alleged in the petition.

After institution of trial, Patent Owner, MobileMedia Ideas LLC ("MobileMedia"), filed a patent owner response, Blackberry filed a reply, and an oral hearing was held on October 18, 2013. On December 16, 2013, the parties filed a joint motion to terminate the IPR proceeding, which the PTAB only granted in part, terminating the proceeding with respect to Blackberry, but not with respect to MobileMedia.

In its decision, the PTAB first addressed that it must engage in claim construction before it can analyze questions of obviousness or anticipation. The PTAB also noted that "[n]ot every such patentability analysis, however, necessarily ends with a determination with respect to the prior art. The language used in a claim to define the scope of coverage, read in light of the specification, may be indefinite and thus fail to indicate the scope of the claimed invention."

The PTAB then addressed the law surround means-plus-function claims, particularly with respect to computer implemented claims. "The United States Court of Appeals for the Federal Circuit has given considerable, clear, and consistent guidance, with regard to the construction of a computer-implemented means-plus-function claim element under 35 U.S.C. § 112, sixth paragraph. Except for a narrow exception explained in In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011), concerning generic functions performed by a general-purpose computer, such as "processing," "receiving" and "storing," a computer-implemented means-plus-function element is indefinite unless the specification discloses the specific algorithm used by the computer to perform the recited function."

The PTAB then turned to the specific claims at issue. "In the circumstance here, involving a specialized function of encrypting information signals, the corresponding structure to the means-plus-function recitation cannot be a general-purpose computer, but must be a special purpose computer programmed to perform a disclosed algorithm causing the computer to accomplish the recited function. WMS Gaming, 184 F.3d at 1349, see also Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) ("A computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.").

The PTAB also found that "[i]t is not in dispute that the specification of the ?048 patent discloses no specific algorithm with which to program the microprocessor to achieve the function of "encrypting the information signals prior to storage in said memory means." In its petition, Blackberry states that the ?048 patent does not disclose an algorithm for performing the claimed encrypting function. At final hearing, counsel for MobileMedia acknowledged that the specification of the '048 patent does not describe an encryption algorithm. "

After addressing additional arguments of MobileMedia, the PTAB remained unconvinced and determined that the claims were indefinite. "For the foregoing reasons, we are unable to determine obviousness of claims 1-12 of the ?048 patent under 35 U.S.C. § 103. Accordingly, it is appropriate to terminate the proceeding under 37 C.F.R. § 42.72."

Blackberry Corporation v. Mobilemedia Ideas, LLC, Case IPR 2013-00036 (PTAB March 7, 2014)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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