Federal Circuit Clarifies Not All § 112 ¶ 6 Indefiniteness Prevents Prior Art Invalidity Analysis by PTAB
Before Taranto, O’Malley, and Newman. Appeal from the Patent Trial and Appeal Board.
Summary: Anticipation and obviousness analysis by the PTAB is not impossible when some but not all claimed alternatives are indefinite under 35 U.S.C. § 112 ¶ 6.
The PTAB instituted Oticon’s petition for Inter Partes Review of Cochlear Bone Anchored Solutions’ (“Cochlear”) patent relating to rehabilitating a patient with unilateral hearing loss. The PTAB determined that because claims 7–10 contain means-plus-function limitations without a corresponding structure disclosed in the specification, it could not construe the claims in order to compare the claim requirements with the prior art. The PTAB thus declined to invalidate those claims. Oticon appealed this decision.
The Federal Circuit affirmed in part and vacated in part. The Federal Circuit agreed that claims 7–9 were indefinite under § 112 ¶ 6 because each contained at least one required means-plus-function claim element for which the specification provided no corresponding structure. Thus, “it [wa]s impossible to conduct a prior-art analysis” and the “necessary course of action was to conclude that unpatentability of claims 7–9 could not be shown.” The Federal Circuit, however, vacated the PTAB’s decision with respect to claim 10. Unlike claims 7–9, claim 10 did not contain a required claim element in means-plus-function form. Claim 10 recited “directivity means comprising at least one directivity dependent microphone and/or signal processing means in the electronic circuitry.” The Federal Circuit held that the use of the “and/or” disjunctive created three alternative subsets of claim coverage. And although the PTAB correctly held that “signal processing means” was indefinite, “directivity-dependent-microphone” was “clear structure” for performing the claimed function. It was error for the PTAB to rely entirely on the indefiniteness of some of the alternatives to conclude that a prior art analysis was impossible for every alternative. The Federal Circuit remanded for determination of whether the “directivity-dependent-microphone” alternative was subject to § 112 ¶ 6 and whether this alternative was anticipated or rendered obvious by the prior art.
Editor: Paul Stewart