Patent Lawyer Blog
In a recent Patent Trial and Appeal Board (PTAB) decision, the Board denied institution of an inter partes review (IPR) in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00966), highlighting the critical importance of consistent claim construction strategies in patent challenges.
The Core Dispute
The controversy centered on Cambridge Mobile’s approach to construing the claimed “component” terms in U.S. Patent No. 9,333,946 B2. The patent owner, Sfara, Inc., argued for denial based on Cambridge Mobile’s divergent claim construction positions between district court litigation and the IPR petition.
In district court proceedings, Cambridge Mobile advocated for means-plus-function construction under 35 U.S.C. § 112(f), contending the terms were indefinite. However, in their IPR petition, they simply argued for “plain and ordinary meaning” without explaining this shift in position or providing an alternative means-plus-function construction.
Regulatory Framework
The dispute brought Rule 104(b)(3) into sharp focus. This regulation requires IPR petitions to explicitly state how challenged claims should be construed. For means-plus-function claims, petitioners must identify specific portions of the specification describing corresponding structure for claimed functions.
The significance of this requirement is underscored in the USPTO’s Consolidated Trial Practice Guide, which warns that petitioners who fail to address § 112(f) construction “risk failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).”
The Majority’s Decision
The Board found Cambridge Mobile’s petition deficient under Rule 104(b)(3) because the petition failed to either identify specific structural support in the specification or explain why the terms shouldn’t be treated as means-plus-function limitations. This deficiency was particularly glaring given Cambridge Mobile’s prior emphasis in district court that the means-plus-function issue was “most significant to the resolution of the case.”
A Notable Concurrence
Judge Horvath’s concurring opinion offered a different perspective while reaching the same conclusion. He disagreed with denying the petition solely for failing to construe the claims, arguing that Rule 104(b)(3) doesn’t mandate denial for such failures. Moreover, he noted that Cambridge Mobile arguably satisfied the rule by stating claims should have their plain meaning.
However, Judge Horvath would still deny institution because he found the “comparing component” limitation to be means-plus-function but lacking sufficient structural support in the specification. As he explained, “The term ‘comparing component’ is a nonce-word that does not connote a definite structure.”
Implications
This decision underscores several key points for practitioners:
- The importance of maintaining consistent claim construction positions across different forums
- The need to explicitly address means-plus-function issues in IPR petitions
- The critical role of structural support in the specification for means-plus-function limitations
The case serves as a reminder that when challenging patents through IPR, petitioners must carefully consider and explain their claim construction positions, particularly when taking positions that differ from related district court litigation. As the Board demonstrated, failure to do so can be fatal to institution.
The decision also highlights the ongoing debate about the relationship between IPR proceedings and parallel district court litigation, particularly regarding claim construction strategies. While different positions may be permissible, they must be properly explained and supported.
This inter partes review was decided Per Curiam by Administrative Patent Judges John F. Horvath, Robert L. Kinder, and Brent M. Dougals. Cambridge Mobile Telematics, Inc. v. Sfara, Inc., Case No. IPR2024-00966, Paper 12 (PTAB Dec. 13, 2024).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.