Takeaway: A petitioner must identify the specific portions of the specification that describe the corresponding structure of each means-plus-function limitation in the challenged claims in the petition. It is not enough to show how those limitations are disclosed in the prior art.

In its Decision, the Board denied Petitioner’s request for rehearing of the denial of review of claims 1 and 2 of the ’387 Patent for failure to identify specific portions of the specification that describe the corresponding structure of each means-plus-function limitation recited in these claims.

The Board began by stating that a decision is reviewed for abuse of discretion, which may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. The request must specify all matters the party believes were misapprehended or overlooked, and the place where each matter was previously addressed in a paper.

Petitioner first contended that it satisfied the statutory requirements of a petition because it identified the grounds for challenging the “means for matching” and “means for matching or comparing” limitations recited in independent claim 1 in the claim charts included in the Petition and identified where each means-plus-function limitation is found in the prior art. The Board found that the Petition itself must identify the specific portions of the specification that describe the corresponding structure because Petitioner bears the burden to prove claim constructions for each means-plus-function limitation so that it can demonstrate that the prior art renders claims 1 and 2 unpatentable.  Addressing where each means-plus-function limitation recited in claim 1 is found in the prior art is not, by itself, sufficient to carry the burden of identifying the corresponding structure.

Petitioner also noted that the Board instituted review of claim 4, which included a means-plus-function limitation, and the Board acknowledged that Petitioner had sufficiently addressed this limitation. The Board was not persuaded that its determination to deny review of claims 1 and 2 is inconsistent with the determination to review claim 4 because claim 4 did not include a means-plus-function limitation as it is modified by sufficient structure.

Petitioner then stated that the Board instituted review of claims 4, 6, and 10, which included means-plus-function limitations. Again, the Board found that there were no means-plus-function limitations included in these claims.

Finally, Petitioner stated that in the Petition, it explained that independent claim 1 of the patent involved in CBM2013-00027 includes essentially the same limitations as the limitations recited in independent claim 1 of the ’387 Patent, and, based on this comparison, the Board should have considered its construction of the means-plus-function limitation in the CBM2013-00027 petition. The Board stated that Petitioner, per statute, cannot rely on another petition challenging a different patent to meet the requirements.  Further, the Decision to Institute recognized the comparison of the two claims, but also stated that Petitioner did not explain how the means-plus-function limitations compared.

Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2014-00114
Paper 17: Decision on Petitioner’s Request for Rehearing
Dated: November 18, 2014
Patent 7,024,387 B1
Before: Kalyan K. Desphande, Michael R. Zecher, and Georgianna W. Braden
Written by: Zecher
Related Proceeding: CBM2013-00027