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8 June 2017Patents

Federal Circuit backs Playboy in patent win

The US Court of Appeals for the Federal Circuit has affirmed the invalidation of a patent for delivering audio and visual files to a wireless device, handing a win to Playboy Enterprises and IT company MindGeek.

Yesterday, the court handed down its decision, upholding the Patent Trial and Appeal Board’s (PTAB) invalidation of US patent number 7,548,875, owned by mobile technology company Skky.

MindGeek and Playboy filed a petition for inter partes review of the patent, alleging that some of the claims would have been obvious in light of US patent number 7,065,342 (Rolf).

The Rolf patent describes a system and method for wirelessly transmitting music over a network to a cellular phone.

In the petition, MindGeek also argued that the term “wireless device means” is clearly a means-plus-function limitation and therefore invokes 35 USC section 112 paragraph 6.

The section states: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

The board, in its final written decision, determined that “wireless device means” does not invoke section 112 because the term is not “associated with or defined by a function” and that the challenged claims were unpatentable as obvious.

Skky appealed, challenging the board’s conclusion that “wireless device means” does not invoke section 112, and various aspects of the obviousness determination.

According to the mobile technology company, the presence of “means” in “wireless device means” creates the presumption that section 112 has been invoked.

It added that the function of the “wireless device means” is “to request, wirelessly receive, and process a compressed audio and/or visual file”.

However, MindGeek responded that “wireless device means” does not invoke the section because the clause in which it appears describes no corresponding function, and instead denotes structure.

The court agreed with MindGeek, explaining that the clause recites sufficient structure.

“Skky’s arguments to the contrary are, in effect, an attempt to improperly import limitations from the written description into the claims,” said Circuit Judge Alan Lourie, on behalf of the court.

On the board’s finding of obviousness, the court said that the PTAB didn’t err.

“As explained previously, the board applied the correct claim constructions; accordingly, we are not convinced by Skky’s arguments based on its constructions,” explained Lourie.

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