Takeaway: If a petitioner does not identify an algorithm for performing the recited function of a computer-implemented means-plus-function term, the Board may deny the petition.

In its Decision, the Board denied Petitioners’ request to institute inter partes review of claims 1-25 of the ’944 patent. The ’944 patent generally relates to “gateway queuing algorithms in packet networks.”

The Board turned to claim construction and determined that claims 11-24 contain limitations governed by 35 U.S.C. § 112, ¶ 6, which were construed to cover the corresponding structure described in the specification and equivalents. For claims 11-23, the terms “means for” created the rebuttable presumption that § 112, ¶ 6 applied; however, in claim 24, the Board concluded that the presumption that the term “logic for” was not a means-plus-function claim term was overcome because “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed function.” Petitioners identified two sentences in the specification that they contended disclosed “the only possible structure that could be relied upon for the recited function.” However, neither Petitioners nor Patent Owner “point[ed] to any algorithm for performing the functions contained in the limitations of [claims 11-24].” The Board thus concluded that Petitioners “fail[ ] to demonstrate a reasonable likelihood of prevailing in its [sic] challenge to claims 11-24” and denied the Petition as to those claims.

The Board then addressed the multiple obviousness grounds argued by Petitioners for the remaining claims. The Board was persuaded by Patent Owner’s arguments that the cited art did not disclose all of the limitations of the claims.

Accordingly, the Board concluded that the information presented in the Petition did not “show that there is a reasonable likelihood that Petitioners would prevail at trial with respect to at least one claim of the ’994 patent, based on any ground presented in the petition” and denied the petition for inter partes review of claims 1-25.

Ericsson Inc. v. Intellectual Ventures II LLC, IPR2014-01170
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: February 17, 2015
Before: Bryan F. Moore, Brian J. McNamara, and David C. McKone
Written by: Moore
Patent: 7,385,994 B2
Related Proceedings: Intellectual Ventures II LLC v. AT&T Mobility LLC et al., 1:13-cv-01668-UNA (D. Del.); Intellectual Ventures II LLC v. Leap Wireless International Inc. et al., 1:13-cv-01669-UNA (D. Del.); Intellectual Ventures II LLC v. Nextel Operations Inc. et al., 1:13-cv-01670-UNA (D. Del.); Intellectual Ventures II LLC v. T-Mobile USA Inc. et al., 1:13-cv-01671-UNA (D. Del.); Intellectual Ventures II LLC v. United States Cellular Corporation, 1:13-cv-01672-UNA (D. Del.).