Means-Plus-Function Claims Found Not Indefinite After Waiver Of Argument In District Court

This article previously appeared in Last Month at the Federal Circuit, February 2012.

Judges: Bryson, Linn, O'Malley (author)

[Appealed from D.D.C., Judge Collyer]

In HTC Corp. v. IPCom GmbH & Co., KG, No. 11-1004 (Fed. Cir. Jan. 30, 2012), the Federal Circuit reversed SJ of invalidity of claims 1 and 18 of U.S. Patent No. 6,879,830 ("the '830 patent"), owned by IPCom GmbH & Co., KG ("IPCom").

HTC Corporation and HTC America, Inc. (collectively "HTC") sued IPCom, seeking a declaration that HTC did not infringe a valid and enforceable claim of one of IPCom's patents. IPCom counterclaimed, adding two patents, including the '830 patent. The '830 patent is directed to a handover in a cellular telephone network. A cellular telephone—called a "mobile station" in the '830 patent—maintains a link with a tower—called a "base station." A handover occurs when a mobile station switches from one base station to another. This happens, for example, when a person using a cellular telephone travels in a car between coverage areas.

HTC moved for SJ of invalidity, asserting that the means-plus-function limitation "arrangement for reactivating" in claims 1 and 18 was indefinite for failure to disclose corresponding structure. The district court rejected that argument because a person of skill in the art would understand that the corresponding structure was a processor and transceiver. HTC also sought SJ asserting that claims 1 and 18 were indefinite because they claimed both an apparatus and method steps. The district court agreed and granted SJ of invalidity of claims 1 and 18. The parties stipulated that claim 12 was also indefinite under the district court's reasoning.

On appeal, the Federal Circuit concluded that the district court erred when it held the claims indefinite for claiming an apparatus and method steps. First, the Court found that the district court misconstrued the claims. Then, the Court explained that Federal Circuit precedent prohibiting hybrid claiming of apparatus and method steps is inapplicable to claims 1 and 18 as correctly construed.

Claims 1 and 18 begin by reciting a "mobile station" to be used with a "network." Immediately following "network" are the phrases "including a first base station and a second base station" and "that achieves a handover from the first base station to the second base station by [implementing enumerated functions]." The parties disagreed whether the mobile station or the network implements six other...