Federal Circuit Affirms Post-Grant Review Decision Finding Claims Indefinite
On September 9, 2021, the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board in a post-grant review proceeding construing the claim term “pressure control assembly” as a means-plus-function limitation and finding the challenged claims indefinite for lack of corresponding structure. Team Worldwide Corp. v. Intex Recreation Corp., __ F.3d __ (Fed. Cir. Sept. 9, 2021)
Post-grant review at the U.S. Patent Office is a trial proceeding, initiated by a third-party’s filing of a petition within nine months after the grant of a patent that is subject to the America Invents Act (AIA)—i.e., a patent containing at least one claim with an effective filing date after March 16, 2013, the effective date of the AIA. At a high level, the purpose of a post-grant review proceeding is for the Board to review the patentability of one or more of the challenged patent claims.
In this proceeding, Intex Recreation Corp. (Intex) filed a petition for post-grant review of U.S. Patent No. 9,989,979 (the ’979 patent), owned by Team Worldwide Corporation (TWW). Intex argued, as a threshold matter, that the ’979 patent was eligible for post-grant review despite claiming priority to a pre-AIA patent application. On the merits, Intex argued that the ’979 patent was unpatentable for multiple reasons, including that it was indefinite for failing to disclose structure for performing each of four recited functions of a claimed “pressure controlling assembly.”
With respect to post-grant review eligibility, the Board explained that the ’979 patent would not be eligible for post-grant review if written description support for the claimed subject matter could be found in an ancestor application that was filed before March 16, 2013. After construing “pressure controlling assembly” as a means-plus-function term, the Board identified four claimed functions and then examined the ancestor application (which is substantively identical to the ’979 patent) to determine whether the ’979 patent could properly claim priority to the pre-March 16, 2013 ancestor application. The Board found that the ancestor application lacks the written description needed to establish that the inventors were in possession of a “pressure controlling assembly” that performs the function of “automatically activat[ing] [a] supplemental air pressure providing device.” The Board therefore determined that the ’979 patent was eligible for post-grant review. With respect to the unpatentability issues, because the ancestor application is substantively identical to the ’979 patent, the Board similarly found that the specification of the ’979 patent lacks corresponding structure for performing the function of “automatically activat[ing] [a] supplemental air pressure providing device.” The Board therefore determined, among other things, that the ’979 patent is unpatentable as indefinite for lack of corresponding structure.
On appeal, TWW raised numerous challenges, including that the ’979 patent is ineligible for post-grant review and that the Board erred in construing “pressure controlling assembly” as invoking the means-plus-function statute. TWW further argued that, even if that construction were correct, the Board erred in determining that the ’979 patent fails to disclose sufficient structure for performing the claimed functions. The CAFC explained that because TWW’s arguments as to post-grant review eligibility are the same as its indefiniteness arguments, the analysis on appeal collapses to simply whether the Board erred in construing “pressure controlling assembly” as a means-plus-function limitation invoking § 112(f) and whether the ’979 patent fails to describe structure sufficient to perform each of its recited functions.
With respect to the Board’s determination that “pressure controlling assembly” invokes the means-plus-function statute, the CAFC found no error for essentially four reasons: (1) the term is written in typical means-plus-function format; (2) nothing in the ’979 patent specification provides a structural definition for the term; (3) nothing in the prosecution history showed that “pressure controlling assembly” connotes a particular definite structure or class of structures; and (4) the extrinsic evidence, including expert testimony and prior art references, failed to show that “pressure controlling assembly” is used in common parlance by skilled artisans in the field.
With respect to the prosecution history, TWW argued that the examiner’s citation to various pressure sensors in the prior art as disclosing the “pressure controlling assembly” demonstrated that a skilled artisan would have understood “pressure controlling assembly” to connote a particular definite structure or class of structures (e.g., pressure sensors). The CAFC rejected this argument, explaining that it failed to see why an examiner’s ability to recognize that a pressure sensor in the prior art may perform some of the stated functions of the “pressure controlling assembly” is evidence that the term itself connotes structure.
Similarly, with respect to the extrinsic evidence, the CAFC found no fault with the Board’s explanation that, even if the use of the term reflected a designation of structure, the extrinsic record demonstrates, at best, that the term is used as a descriptive term across a broad spectrum of industries, having a broad range of structures.
With respect to the Board’s determination that the ’979 patent fails to disclose corresponding structure for “automatically activat[ing] the supplemental air pressure providing device,” the CAFC found that TWW relied exclusively on conclusory expert testimony about how a skilled artisan would interpret certain elements in one of the patent figures. The CAFC also agreed with the Board’s determination that a related Chinese patent application, which provided a more detailed explanation about the “pressure controlling assembly”—but which was not incorporated into the ’979 patent’s disclosure—could not save the claims. Accordingly, the CAFC affirmed the Board’s decision that the challenged claims of the ’979 patent are unpatentable as indefinite.