Amending Claims in IPRs is not Getting Easier

Scott Daniels | March 10, 2014

The Patent Office justifies its claim construction standard in inter partes and post-grant reviews – the broadest reasonable interpretation – by noting that that the patentee is always free to amend its claims to distinguish over the prior art.  In early IPR and CBM practice, however, such claim amendments have proven difficult so far.

The APJs’ Final Written Decision in the IPR BlackBerry v. MobileMedia Ideas (IPR2013-00016), cancelling all challenged claims, is a recent example.  MobileMedia’s patent claimed an electronic picture frame for displaying an image in a normal direction regardless of the direction in which the frame is held. The challenged independent claim included the limitation “means for determining a direction … .”

In their institution decision, the APJs identified three components – “the control microcomputer, the position detection switch, and the image processing block” – as constituting the corresponding structure disclosed in the specification.  The APJs added that the microcomputer computer was a special purpose computer, not a general purpose computer, so that MobileMedia would need to identify in the specification an algorithm that would be operated by the microcomputer to perform the claimed direction determination function.    The APJs cautioned, however, that they could not find such an algorithm in the specification.

MobileMedia was clearly sensitive to the APJs’ concern.  It moved to amend its independent claim to define the “means for determining a direction” limitation as comprising a position sensor, an image processing block, and a microcomputer.  It then asserted that the claim now recited sufficient structure so that the limitation in question was no longer means-plus-function.  Evidently, MobileMedia had come to the same conclusion that there was no algorithm in the specification.

But the APJs sank their teeth even more deeply into the algorithm issue, refusing to grant MobileMedia’s motion to amend.  They found that the recitation of the word “means” in the claim created a presumption of means-plus-function and that patentee had failed to show that the newly added structure was sufficient to perform the claimed function: “merely referencing that claim construction without further explanation as to how the features added in substitute claim 19 provide sufficient structures to perform the recited function is insufficient to establish that the limitation is not a means-plus-function limitation under § 112, ¶ 6.”

MobileMedia had also failed to explain whether the claim term “position sensor” should be construed as the “position detection switch” mentioned in the specification.  More importantly, the patentee had not identified “the specific algorithm associated with the microcomputer for performing the functions recited in the substitute claims, or explain why an algorithm is not necessary for performing the recited functions” (emphasis in original).  Since MobileMedia had not “set forth a reasonable claim construction,” the APJ’s denied its motion to amend the independent claim.

The APJs then denied the patentee’s requests to amend its dependent claims as well.  Because MobileMedia had not included a “reasonable explanation as to why the features recited in the original patent claims are eliminated, MobileMedia has not demonstrated that such amendments are responsive to a ground of unpatentability involved in the trial.” MobileMedia had also failed to explain why more than one substitute claim was needed for the original claims to be replaced.  Finally, it had not adequately explained why the substitute claims were patentable over the prior art because it limited its discussion to the references asserted in BlackBerry’s petition and did not define “the level of ordinary skill in the art, and what was known previously regarding the features added in the substitute claims.”

Having denied MobileMedia’s motion to amend, the APJs canceled the challenged claims without further discussion of the merits.

This IPR also involves the interesting twist that the case did not end even though BlackBerry and MobileMedia jointly moved to terminate the proceeding.  Because of the advanced stage of the case, the APJs terminated with respect to BlackBerry, but they refused to terminate with respect to MobileMedia and issued a final written decision despite an apparent settlement between the parties.

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