Federal Circuit Upholds IPR Decision of Unpatentability in Skky v. MindGeek

Knobbe Martens
Contact

Knobbe Martens

The Federal Circuit upheld an IPR final written decision by the PTAB holding that MindGeek’s claims were unpatentable in Skky, Inc. v. MindGeek, S.A.R.L., No. 2016-2018 (Fed. Cir. June 7, 2017). 

MindGeek filed a petition for inter partes review of Skky’s patent.  The challenged claims were directed to a method of transmitting multimedia files to a “wireless device means.”  The Board found that “wireless device means” does not invoke § 112 ¶ 6, because the phrase is not associated with a function.  Under this construction, the Board found the challenged claims invalid as obvious in view of two references. Skky appealed. 

The Federal Circuit affirmed the Board’s finding.  The Federal Circuit noted that it is not bound by the Examiner’s understanding during prosecution that the claim term invoked § 112 ¶ 6.  Moreover, the Federal Circuit stated that determining whether a claim term invokes § 112 ¶ 6 does not turn on the mere presence of the word “means.”  Instead, the determination turns on whether the claim term is understood by the skilled artisan to designate structure.  Here, the term “wireless device,” is used in common parlance to designate structure.  Despite use of the term “means,” the phrase lacked any associated function.  Thus, the presumption that the phrase was a means-plus-function limitation was overcome.   Under this construction, the Federal Circuit upheld the Board’s determination of obviousness.

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.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens
Contact
more
less

Knobbe Martens on:

Reporters on Deadline

Related Case Law

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.