Federal Circuit Upholds IPR Decision of Unpatentability in Skky v. MindGeek

Written by Scott R. Seeley and Andrea Cheek

The Federal Circuit upheld an IPR final written decision by the PTAB holding that MindGeek’s claims were unpatentable in Skky, Inc. v. MindGeek, S.A.R.L., No. 2016-2018 (Fed. Cir. June 7, 2017).

MindGeek filed a petition for inter partes review of Skky’s patent. The challenged claims were directed to a method of transmitting multimedia files to a “wireless device means.” The Board found that “wireless device means” does not invoke § 112 ¶ 6, because the phrase is not associated with a function. Under this construction, the Board found the challenged claims invalid as obvious in view of two references. Skky appealed. The Federal Circuit affirmed the Board’s finding.

The Federal Circuit noted that it is not bound by the Examiner’s understanding during prosecution that the claim term invoked § 112 ¶ 6. Moreover, the Federal Circuit stated that determining whether a claim term invokes § 112 ¶ 6 does not turn on the mere presence of the word “means.” Instead, the determination turns on whether the claim term is understood by the skilled artisan to designate structure. Here, the term “wireless device,” is used in common parlance to designate structure. Despite use of the term “means,” the phrase lacked any associated function. Thus, the presumption that the phrase was a means-plus-function limitation was overcome. Under this construction, the Federal Circuit upheld the Board’s determination of obviousness.