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Means-Plus-Function Claims Found Not Indefinite After Waiver of Argument in District Court

January 30, 2012

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Last Month at the Federal Circuit - February 2012

Judges: Bryson, Linn, O'Malley (author)

[Appealed from: D.D.C., Judge Collyer]

In HTC Corp. v. IPCom GmbH & Co., KG, No. 11-1004 (Fed. Cir. Jan. 30, 2012), the Federal Circuit reversed SJ of invalidity of claims 1 and 18 of U.S. Patent No. 6,879,830 (“the ’830 patent”), owned by IPCom GmbH & Co., KG (“IPCom”).

HTC Corporation and HTC America, Inc. (collectively “HTC”) sued IPCom, seeking a declaration that HTC did not infringe a valid and enforceable claim of one of IPCom’s patents. IPCom counterclaimed, adding two patents, including the ’830 patent. The ’830 patent is directed to a handover in a cellular telephone network. A cellular telephone—called a “mobile station” in the ’830 patent—maintains a link with a tower—called a “base station.” A handover occurs when a mobile station switches from one base station to another. This happens, for example, when a person using a cellular telephone travels in a car between coverage areas.

HTC moved for SJ of invalidity, asserting that the means-plus-function limitation “arrangement for reactivating” in claims 1 and 18 was indefinite for failure to disclose corresponding structure. The district court rejected that argument because a person of skill in the art would understand that the corresponding structure was a processor and transceiver. HTC also sought SJ asserting that claims 1 and 18 were indefinite because they claimed both an apparatus and method steps. The district court agreed and granted SJ of invalidity of claims 1 and 18. The parties stipulated that claim 12 was also indefinite under the district court’s reasoning.

On appeal, the Federal Circuit concluded that the district court erred when it held the claims indefinite for claiming an apparatus and method steps. First, the Court found that the district court misconstrued the claims. Then, the Court explained that Federal Circuit precedent prohibiting hybrid claiming of apparatus and method steps is inapplicable to claims 1 and 18 as correctly construed.

Claims 1 and 18 begin by reciting a “mobile station” to be used with a “network.” Immediately following “network” are the phrases “including a first base station and a second base station” and “that achieves a handover from the first base station to the second base station by [implementing enumerated functions].” The parties disagreed whether the mobile station or the network implements six other functions set forth in the claims. If the mobile station implements the functions, the claims are indefinite because they recite both an apparatus (the mobile station) and method steps (the enumerated functions). If the network performs the functions, the claims are not indefinite because the claims merely describe the network environment in which the mobile station is used.

The Federal Circuit instructed, however, that a reader may assume that the phrase beginning with “including” and the clause beginning with “that achieves” modify “network.” The Court also found that the specification explains that the first base station, not the mobile station, initially stores link data. Finally, the Court was not persuaded by an attorney’s single reference to a “process” in an office action response in the prosecution history when weighed against the plain language of the claims and the specification. Thus, the Court reversed the district court’s grant of SJ of invalidity based on hybrid subject matter.

HTC argued, as an alternative basis for invalidity, that claims 1 and 18 fail to disclose sufficient structure. To determine whether the means-plus-function limitation is definite, the Court applied a
two-step analysis. First, it identified the claimed function. Here, the parties agreed that the function of the term “arrangement for reactivating” is to reactivate the link with the first base station if the handover is unsuccessful. Second, the Court looked to the specification to identify the corresponding structure, material, or acts that perform the claimed function. The Federal Circuit agreed with the district court that the structure corresponding to the “arrangement for reactivating” limitation is a processor and transceiver disclosed in the specification.

HTC argued that, even if one skilled in the art would know the need to use a processor and transceiver, one would not understand exactly how that processor and transceiver would be configured. The Federal Circuit pointed out, however, that as long as a sufficient algorithm describing how a general-purpose computer will perform the function is disclosed, reference to such general-purpose processors will suffice to overcome an indefiniteness challenge. The Court explained that “examination of the specification from the perspective of a skilled artisan does not convert an indefiniteness inquiry into an enablement inquiry.” Slip op. at 17. Thus, the Court was not analyzing whether a skilled artisan could have devised a processor and transceiver—with all the necessary component parts—but whether a skilled artisan would have understood the specification as requiring a processor and transceiver.

While the Court found that the district court did not err in finding that the specification disclosed a processor and transceiver, and that no additional hardware disclosure was needed, the Court found error in the district court’s reliance on a processor and transceiver alone to provide structure to these claims. In the Court’s view, the processor and transceiver amount to nothing more than a general-purpose computer, which is not sufficient structure under Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). Under Aristocrat Technologies, IPCom had to identify an algorithm that the processor and transceiver execute.

While IPCom maintained that the ’830 patent contains such a qualifying algorithm, the Federal Circuit found that the district court failed to analyze the existence and adequacy of an algorithm in the ’830 patent because HTC never asked it to do so. The Court concluded that HTC failed to preserve the argument that the specification fails to disclose an algorithm sufficient to transform the processor and transceiver into a special-purpose computer designed to implement the claimed functions. Below, HTC argued only that the specification’s reference to cellular telephones was insufficient to convey use of a processor and transceiver with sufficiently complex hardware to perform the handover function described in claims 1 and 18. Noting that a remand of the issue would necessitate additional discovery, the Court concluded that remand “would stymie judicial economy because it would require the district court and the parties to invest resources in an issue that could have been raised for the first time below.” Slip op. at 22.
The Court held that the district court correctly concluded that the ’830 patent specification adequately disclosed a processor and transceiver for use in performing the function claimed in claims 1 and 18. The Court further concluded that, although the district court was incorrect to assume that a processor and transceiver are alone sufficient under 35 U.S.C. § 112, ¶ 6 to provide structure for a functional claim, HTC failed to preserve any attack on the algorithm that IPCom asserted provided additional necessary structure. The Court therefore declined to overturn the district court’s denial of SJ on the alternative ground of indefiniteness or to order that the record be reopened.

Summary authored by Joyce Craig, Esq.