A rare example of a scenario in which a means-plus-function interpretation could have actually helped the applicant – and yet they still lost. While the court acknowledged that “the Board has on occasion overlooked particular procedural defaults,” it concluded that “[a]ny technical shortcomings in the procedure for evaluating the clause at issue were not raised and were thus waived.” While I’m not sure that a statutorily mandated procedure for interpreting claims qualifies as a “technical shortcoming,” the lesson is clear. As the old adage goes, raise it or waive it.
Background / Facts: The patent under reexamination here relates to radio-frequency identification (“RFID”) tags that contain not only memory that can but memory that cannot be reprogrammed. In this regard, the claims recite “a means for permanently storing data in an unalterable fashion, said data being known as unalterable data.” After an unfavorably broad interpretation of the term “unalterable data” by the Board, one which permitted the Board to maintain the Examiner’s anticipation rejections, Avid appealed to the CAFC and (for the first time) raised the issue of means-plus-function interpretation under § 112, ¶ 6 as a fallback position should the CAFC uphold the Board’s broadest reasonable interpretation of the individual claim terms.
Issue(s): Whether one can waive a means-plus-function interpretation by failing to timely raise it.
Holding(s): Yes. “[W]hile the presumption that the use of the word ‘means’ requires a search for structure in the application at issue, an applicant needs to specifically raise the point if it is challenging the application of § 112, ¶ 6 by the PTO. See 37 C.F.R. § 41.37(c)(1)(v) [relating to appeal briefs] (requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well). An appellant cannot prevail by arguing alleged technical flaws in the PTO’s procedure when it has itself failed to comply with its own procedural obligations.”