Takeaway: IPR was not instituted because Petitioner did not provide any evidence regarding interchangeability that would support equivalent structure for a means-plus-function limitation, even where neither Petitioner nor Patent Owner construed the term as a means-plus-function limitation.

In its Decision, the Board denied institution of an IPR primarily based on a question of claim construction. Disagreeing with both Petitioner and Patent Owner, the Board held that a claim term was to be construed as a means-plus-function limitation, and accordingly held there to be insufficient evidence to institute the proceeding.
Petitioner argued that a specific claim term should not be construed under 35 U.S.C. § 112, ¶ 6 as a means-plus-function term, instead proposing a construction as a structural element. Petitioner’s invalidity arguments were solely based on this construction.

Patent Owner filed a preliminary response to the petition, also arguing that the same limitation should not be construed as a means-plus-function term.

The Board disagreed with both Petitioner and Patent Owner, holding that the limitation was a means-plus-function limitation. Because the Petition did not address unpatentability of the challenged claims when the term is so construed, the Board held that there was insufficient evidence to institute the proceeding. The Board noted that although the petition produced some evidence in the prior art concerning the limitation in question, there was no evidence regarding interchangeability that would support equivalent structure as required by an analysis under 35 U.S.C. § 112, ¶ 6.

Pride Solutions, LLC v. Not Dead Yet Mfg., Inc., IPR2013-00627
Paper 14: Decision Denying Institution
Dated: March 17, 2014
Patent 8,418,432 B1
Before: Jennifer S. Bisk, Rama G. Elluru, and Gregg I. Anderson
Written by: Anderson
Related Proceedings: Not Dead Yet Mfg., Inc. d/b/a NDY MFG, Inc. v. Pride Solutions, LLC, No. 1:13-cv-03418 (N.D. Ill.)