Takeaway: If a claim term is a means-plus-function limitation governed by 35 U.S.C. § 112, ¶ 6, then by rule, the petitioner must identify the corresponding structure in its petition. If it does not, the Board may deny institution on those grounds alone.

In its Decision, the Board determined that Petitioner had not shown there is a reasonable likelihood that Petitioner would prevail with respect to any of the claims challenged in the Petition. The ’788 Patent relates “to a photovoltaic roofing assembly which can regulate the temperatures experienced by the solar[] cells and requires no roof penetrations for hold-down to the roof surface.”

The Board began with claim construction, noting that the parties disagreed on the claim construction standard. Petitioner stated that the claims should be given their broadest reasonable interpretation, but Patent Owner asserted, and the Board agreed, that because the claims are expired, they are reviewed similar to that of the district court.  Therefore, the claims are given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention.  The Board construed “as a layer on top of said roofing membrane” consistent with the district court’s construction and as proposed by Patent Owner to mean that the photovoltaic modules or integral units, as the case may be, are arranged as an overlying surface on top of the roof membrane.  The Board then reviewed the term “means for regulating the temperature of said photovoltaic modules.”  Petitioner argued for a construction and did not discuss the means-plus-function format, but Patent Owner argued that 35 U.S.C. § 112, ¶ 6, governs the limitation.  The Board agreed and determined that the term is construed to cover the corresponding structure described in the specification and its equivalents.  The Board then noted that by rule, 37 C.F.R. § 42.104(b)(3), Petitioner was required to identify said corresponding structure in the Petition, and because Petitioner failed to do this, the Petition as to the claims at issue (claims 1-5) was denied for this reason alone.  Finally, the Board construed “installing photovoltaic modules on top of said pre-formed spacers” to require that the installation of the pre-formed spacers in the field occur prior to installation of the photovoltaic modules on top of them.

The Board then turned to Petitioner’s challenges to claims 1-5, 16, and 17, starting with the argument that said claims are anticipated by Brown. The Board noted at least one limitation of each of these claims was missing from Brown.  The Board then examined the challenge to the claims as anticipated by Stiebel, and again noted that at least one limitation of each of these claims was missing from Stiebel.  The Board then addressed the challenge to the claims as being anticipated by Russell, again finding that at least one limitation of each of the claims was missing from Russell.

Panel Claw, Inc. v. Sunpower Corp., IPR2014-00386
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: June 30, 3014
Patent 5,505,788
Before: Michael J. Fitzpatrick, Jo-Anne M. Kokoski, and Jon B. Tornquist
Written by: Fitzpatrick
Related Proceedings: Sunpower Corporation v. Panel Claw, Inc., No. 12-1633-GMS (D. Del.); SunPower Corp. v. Sunlink Corp., No. 08-cv-2807 (N.D. Cal.); IPR2014-00388