PTAB: The Name of the Game Is the Claim

by McDermott Will & Emery

BlackBerry Corporation et al. v. MobileMedia Ideas LLC

Representing the first outcome of its kind, in the final written decision of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) terminated the proceeding without issuing a final decision on the patentability of the challenged claims, stating that the scope of the challenged claims could not be determined.  In doing so the Board provided a primer on the law controlling the construction of computer-implemented means-plus-function claim elements.  BlackBerry Corporation et al. v. MobileMedia Ideas LLC, Case IPR2013-00036 (PTAB, March 7, 2014) (Lee, J.).

BlackBerry petitioned for review of a patent that MobileMedia had earlier asserted against it in a district court action. The invention related to “a mobile communication apparatus for carrying out communication through radio waves” and “an information providing system using the mobile communication apparatus.”  The claimed invention required reproducing and outputting downloaded data when the apparatus is in a “stand-by state.”

At the institution stage, the Board determined that the meaning of term “stand-by state” was central to its patentability analysis.  BlackBerry urged that the claim term should be construed according to its plain and ordinary meaning.  In its preliminary response, MobileMedia took the unorthodox position that “it takes no position on the correct claim interpretation for this claims element [i.e., “stand-by state”] at this time.”  Instead, MobileMedia argued that the IPR petition failed to explain why BlackBerry’s proposed interpretation of “stand-by state” was correct over that of a panel of reexamination examiners.  That panel had earlier denied an ex parte reexamination request for the subject patent that was based on two references common to all of BlackBerry’s asserted grounds of invalidity. Instituting the proceeding, the Board wasted little effort construing the key term at that point in the proceeding: “[g]iven that the patent owner takes no position on the correct interpretation of ‘stand-by state,’ we discuss nothing more, except to note that we are aware of the interpretation accorded the term during reexamination.”

In the final written decision, the PTAB noted that a determination of anticipation and obviousness over prior art necessarily begins with claim construction: “[i]t is axiomatic that we must first know what is being claimed.” Focusing on the computer-implemented means-plus-function element common to the two independent claims under review, namely “processing means for encrypting the information signals prior to storage in said memory means,” the Board found that the element was indefinite because the specification lacked a supporting algorithm for the claimed encypting function. Because the claim scope could not be determined, the Board explained that any difference(s) between the claimed invention and the prior art could not be determined.

Pointing to the “considerable, clear, and consistent guidance” of the Federal Circuit, the Board explained that the specification did not comply with 35 U.S.C. § 112, ¶ 6, since it was devoid of any encryption algorithm for performing the stated function.  The Board also noted that the claimed encrypting function was not one that fell within the narrow exception where the function recited is generic and can be performed by any general-purpose computer without special programming.

Because the Board terminated the proceeding without resolving the patentability of the claims, the patent owner technically prevailed.  Such a “victory,” however, likely came with the sequela of incurable indefiniteness of all the patent claims.


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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