EnOcean GMBH v. Face Int’l Corp.: Assesing 112, para. 6 Support in tandem with Foreign Priority Support

Category: Priority
By: Jesus Hernandez, Blog Editor/Contributor   
TitleEnOcean GMBH v. Face Int’l Corp., No. 2012-1645 (Fed. Cir. Jan. 31, 2014).
IssuesThis appeal concerns two sets of EnOcean’s claims, the receiver claims and the means-plus-function claims, and presents two main issues: [1] whether the Board erred in finding that the receiver claims invoke § 112, ¶ 6; and [2] whether the Board erred in finding that both sets of claims are not entitled to claim priority to the German and PCT applications [on the grounds of inadequate structural support in the parent applications].
EnOcean at *2 (text added).
HoldingsFor the foregoing reasons, we hold: [1] that the receiver claims in EnOcean’s application do not invoke § 112, ¶ 6 [because the term “receiver” connotes sufficiently adequate structure]; [and] [2] that the “means for receiving” limitations found in EnOcean’s means-plus-function claims are adequately supported by the written descriptions found in the German and PCT applications for purposes of claiming priority; and […] that the “receiver” limitations found in EnOcean’s receiver claims are adequately supported by the written descriptions found in the German and PCT applications for purposes of claiming priority [because a specific structure of a “receiver”/“receiver means” is not required, since said terms have a well-known structural meaning.].
Id. at *11-12 (text added).

Procedural HistoryEnOcean GmbH (“EnOcean”) appeals from an order of the U.S. Patent and Trademark Office (“PTO”), Board of Patent Appeals and Interferences (“Board”), finding all of EnOcean’s claims involved in Patent Interference No. 105,755 with Face International Corporation (“Face”) unpatentable over a combination of prior art that includes PCT Application No. PCT/GB01/00901 to Burrow (“Burrow reference”).
EnOcean at *2 (internal citations omitted).
Legal Reasoning (Rader, CJ, Lourie, Prost)
[1] Whether the Receiver Claims Invoke § 112, ¶ 6
Legal Standard - 112, para. 6It is well established that the use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term. [...] Conversely, where, as here, the claim language does not recite the term “means,” we presume that the limitation does not invoke § 112, ¶ 6. [...] However, this presumption can be overcome if the challenger demonstrates that “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”
EnOcean at *5-6 (internal citations omitted).
Claims at issueClaim 37: “a signal receiver for receiving a first electromagnetic signal transmitted by said first signal transmitter;”
Claim 38: “a receiver for receiving a first radiofrequency signal transmitted by said first signal transmitter;”
Claim 43: “a receiver adapted to receiving a radiofrequency telegram transmitted by said radio frequency transmission stage;”
Claim 45: “a receiver adapted to receiving a radiofrequency telegram transmitted by said first radio frequency transmission stage;”
Id. at *6.
Term "receiver" by itself, connotes structure
The term “receiver” (i.e., the absence of the term means) presumptively connotes sufficiently definite structure to those of skill in the art. [...]. And in this case, Face has not overcome that presumption. Indeed, the record indicates that the term “receiver” conveys structure to one of skill in the art—the Board itself made a factual finding that that the “skilled worker would have been familiar with the design and principles of the types of components utilized in the claimed invention, including . . . receivers.” [...].
Id. at *7 (internal citations omitted).
We have stated previously that just because “the disputed term is not limited to a single structure does not disqualify it as a corresponding structure, as long as the class of structures is identifiable by a person of ordinary skill in the art.
Id. at *7 (internal citations omitted).
[2] Whether the Board Erred in Determining Priority
Legal Standard: Foreign Priority“To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’”
EnOcean at *9.
Claim at issue29. A switching system comprising:
signal reception means for receiving a first electromagnetic signal transmitted by said first signal transmission means;
said signal reception means being adapted to generate a second signal in response to said first elec- tromagnetic signal transmission means; . . . .
Id. at *9.
Support in Foreign ApplicationThe German application’s only reference to a receiver states: In this case, a typical scenario is that all the switches, for example light switches, upon actuation, emit one or a plurality of radio frequency telegrams which are received by a single receiver and the latter initiates the corresponding actions (lamp on/off, dimming of lamp, etc.). [...].
Id. at *9-10 (internal citation omitted).
Foreign Application Contains Adequate Support“Sufficient structure must simply ‘permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation’ so that he may ‘perceive the bounds of the invention.’” […] For the reasons articulated in [part 1] EnOcean has demonstrated that a person of ordinary skill in the art could understand the bounds of the invention merely by reading the term “receiver,” which is present in EnOcean’s German and PCT applications. In requiring that the German and PCT applications “expressly describe the structure of the receiver,” the Board applied an incorrect standard. […] Since the inventors did not invent the receiver, and the Board found that the structure was well known as of the filing date, the inventors were “not obliged . . . to describe . . . the particular appendage to which the improvement refers, nor its mode of connection with the principal machine.” […]
Id. at *10-11 (internal citations omitted).
We therefore vacate-in-part the Board opinion to the extent it relates to EnOcean’s receiver and means-plus-function claims. We also vacate the Board’s dismissal of EnOcean’s remaining motions and remand with instruc- tions to the Board to consider all outstanding EnOcean motions in view of this opinion.
Enocean at *12.

Image Attribution Statement: Willem Blaeu, "Licht der Zeevaert," available as a public domain image due to expiration of copyright (life of author +100, http://commons.wikimedia.org/wiki/File:Licht_der_Zeevaert,_Frontispiz.jpg (last visited Jan. 31, 2014). 
© 2000-2023, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy