Takeaway: If a challenged claim is found to be indefinite in an IPR, it is likely the Board will not be able to determine whether it is unpatentable based on prior art.

In its Final Written Decision, the Board determined claims 1-3, 5, 8-14, 16-19, 22, and 24 of the ’966 Patent are unpatentable, but was unable to determine the unpatentability of claim 23 because it is indefinite. The ’966 Patent describes a headphone set with “speaker headphone assemblies” on opposite ends of a headband that allow for two speakers: an exterior, outward-facing speaker for public listening, and an interior, inward-facing speaker for personal listening.

The Board began with claim construction, noting that the claims are construed with their broadest reasonable construction in light of the specification of the patent. The Board adopted Petitioner’s proposed constructions of “switching means,” “wireless technology means,” and “sensor means” without analysis. The Board then reviewed the term “volume controlling means” found in claim 23. The Board found that this is a means-plus-function claim term under 35 U.S.C. § 112, paragraph 6. The Board agreed with Petitioner that the specification does not identify a structure that corresponds to the function because the specification merely depicts the structure as a box in a block diagram, which is not sufficient. Therefore, the Board found claim 23 indefinite.

The Board then discussed the grounds of unpatentability. The Board noted that Patent Owner did not respond to the Petition. Therefore, the only evidence of record is the Petition. The Board still reviewed each claim and determined that the limitations were disclosed in each prior art reference, and that there was a motivation to combine the references. However, the Board noted that because claim 23 is indefinite and because the Board is only allowed to determine patentability on the basis of prior art in an IPR, the Board found that it was unable to determine whether claim 23 is unpatentable.

Headbox, LLC v. Infinte Imagineering, Inc., IPR2015-00365
Paper 11: Final Written Decision
Dated: May 22, 2015
Patent 8,085,966 B2
Before: Glenn J. Perry, Benjamin D.M. Wood, and Patrick R. Scanlon
Written by: Wood