Black Box Structure Insufficient for MPF Element

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In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the ʼ740 patent”), finding that the specification did not sufficiently describe a corresponding structure for means-plus-function terms in the independent claims.

The ʼ740 patent relates to a reduced area imaging device comprising circuitry arranged in a stacked relationship for use within a surgical instrument.  The challenged claims include two means plus function terms relating to said circuitry:  (1) “circuitry means on said first plane and coupled to said array of pixels for timing and control of said pixels”; and (2) “circuitry means coupled to said array of pixels for timing and control of said pixels.”  Both Petitioner and Patent Owner proffered constructions for the claimed circuitry means in their filings.  And both parties described similar corresponding structures centered around a “Timing and Control Circuits 92” Box depicted in a schematic of the circuit board.

The PTAB agreed with the parties that Timing and Control Circuits 92 was at least part of the described structure for the claimed circuitry means.  But it questioned whether a person of skill in the art would recognize a specific structure for Box 92 in the schematic.  The PTAB noted “if nothing specific would have been recognized as described, then Box 92 in [the Figure] is merely a black box and does not convey sufficient structure, to correspond, even if in part, to the claimed ‘circuitry means….’”  Such was the case here.

In denying institution, the PTAB found that the specification of the ʼ740 patent “does not describe what is contained within Box 92,” and merely “refers to ‘Timing and Control Circuits’ broadly as ‘electronic components,’ rather than as any specific circuit arrangement or class of circuit arrangements.”  Notably, the PTAB recognized that the ʼ740 patent incorporated by reference another patent that provided further discussion of the timing and control circuitry.  But “material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause.”  Finding that Timing and Control Circuits 92 was nothing more than a black box, the PTAB held that the ʼ740 patent did not sufficiently describe a corresponding structure for the means-plus-function circuitry terms.  And because “the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained.”  The PTAB therefore denied institution.

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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