A major appeal of ex parte and inter partes reexamination was the high rate at which the Patent Office granted requests and initiated proceedings. On the other hand, the APJs in recent months are becoming much more discriminating in their consideration of inter partes review petitions, denying a sizeable percentage of such requests for failing to present a complete and convincing argument for unpatentability.
The APJs’ decision denying review this Monday in Pride Solutions v. Not Dead Yet Manufacturing (IPR2013-00627) is a case in point. The patent claimed a “connect/disconnect coupling for securing a stalk stomper to a tool bar.” (In case you don’t know, “a stalk stomper” stomps on stubble from harvested crops, reducing the possibility of the stubble damaging tractors, etc.). The exemplary claim included the limitation of “a retention means on the plate member” for engaging a pin to prevent desirable longitudinal movement of certain component parts.
Mindful of its responsibility to construe the claims before applying them to the prior art disclosure, the petitioner fully considered the possibility of the “retention means” being a means-plus-function limitation. The petitioner concluded, though, that the claim was unclear, that under the “broadest reasonable construction” standard the limitation was not means-plus-function, and “‘retention means’” should be construed broadly, e.g., as a “‘mechanism that retains something’”:
the plain language of “retention means” in the claim is ambiguous, the specification discloses a single embodiment of a “retention means,” and the Patent Owner has applied the term broadly to read on structures very different than the disclosed embodiment. Accordingly, under a broadest reasonable construction, Petitioner submits that, for purposes of this inter partes review, the recited “retention means” should be construed broadly, e.g., as a “mechanism that retains something.”
The patent owner also concluded that “retention means” was not means-plus-function and offered its own more limited construction.
The APJs disagreed with both parties, finding that the word “means” created a presumption of means-plus-function, and that the claim did not recite sufficient structure to rebut that presumption. In particular, the APJs construed the limitation to cover the specific “L-shaped bracket” disclosed in the specification as the corresponding structure and the equivalents thereof.
The APJs then found that the petitioner had “not provide[d] any evidence of how the prior art references should be applied [to the claims] if ‘retention means’ is construed as a means-plus-function term. Nor is the evidence provided by Petitioner sufficient to show a reasonable likelihood that it will prevail on at least one of the challenged claims.” They acknowledged that the petitioner had proposed four grounds for unpatentability, but “[n]one of the evidence submitted equates to a retention block or a retention stop in the form of an L-shaped bracket, as we have construed ‘retention means.’” (Emphasis added).
What does this mean for practitioners? Hindsight is 20-20. But an argument in the alternative – in the event that “retention means” is found by the APJs to be means-plus-function – might have been in order. It is true that the petition here had reached the strictly-followed 60-page limit. Still, given the APJs’ proclivity for denying additional grounds for unpatentability as “redundant,” future petitioners might consider jettisoning an extra ground in favor of a prior art analysis that would apply in the event that the APJs adopt a different claim construction.