Broad Claim Terms Need Only Connote Sufficiently Definite Structure To Those Skilled In The Art

In EnOcean GmbH v. Face International Corp., No. 12-1645 (Fed. Cir. Jan. 31, 2014), the Federal Circuit vacated-in-part the Board's order finding all of EnOcean GmbH's ("EnOcean") claims involved in Patent Interference No. 105,755 with Face International Corporation ("Face") unpatentable, and remanded for further proceedings.

EnOcean owns the rights to U.S. Patent Application No. 10/304,121 ("the EnOcean application"), which contains claims to a self-powered switch. The named inventors on the EnOcean application originally disclosed their new switch in a German application filed on May 24, 2000, and in a PCT application filed on May 21, 2001. Face is the real party of interest in U.S. Patent No. 7,084,529, which also claims a self-powered switch. After the Board declared an interference between EnOcean and Face, it found that all the involved Face claims were unpatentable under 35 U.S.C. § 103 in view of PCT Application No. PCT/GB01/00901 to Burrow ("the Burrow reference") in combination with several other references.

Under 37 C.F.R. § 41.207(c), the Board next applied the presumption that the claims of the EnOcean application would be unpatentable for the same reason that Face's claims were unpatentable. To rebut the presumption, EnOcean needed to show that its involved claims could benefit from the filing date of its German and PCT applications to thereby eliminate the Burrow reference. However, the Board found that EnOcean's disclosure of a "receiver" in its German application did not support the "means for receiving" limitation in the claims of the EnOcean application. The Board also found that while certain receiver claims of the EnOcean application lacked "means for" language, the claims were defined solely by their function, and thus were construed as means-plus-function claims. Because the German application failed to expressly describe the structure of the receiver and did not support EnOcean's means-plus-function claims, the Board accorded no benefit of priority to EnOcean's claims, found all of EnOcean's claims unpatentable under § 103 for the same reason that Face's claims were unpatentable, and dismissed all other pending motions. EnOcean appealed.

"Given the demonstrated familiarity that one of skill in the art would have with a 'receiver' and the Board's own factual finding that a skilled worker would know what a 'receiver' is, we hold that in this case the term is not the 'black box that performs a recited function' that...