Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner has argued in parallel district court litigation that claim terms are means-plus-function terms under § 112(f) (and called that issue dispositive), and the patent owner has offered competing means-plus-function constructions there, a petition that merely states a plain and ordinary meaning position and does not identify corresponding structure under 37 C.F.R. § 42.104(b)(3), explain why the inconsistent positions are warranted, or offer an alternative means-plus-function construction is deficient, and the Board may deny institution under § 314(a). The Board stated that inconsistent claim construction positions before the Board and a district court are not necessarily prohibited. No prior precedent directly addressed this issue as a binding rule; the majority follows the Board's earlier 10x Genomics (IPR2023-01299, Paper 15) decision and the CTPG's warning on § 112(f), and clarifies that inconsistent positions are not per se barred (citing 10x Genomics v. Bio-Rad, IPR2020-00086). Petitioners who argue § 112(f) in district court cannot simply footnote their litigation position and apply plain meaning at the Board; they must explain the inconsistency or provide an alternative means-plus-function construction with corresponding structure. Patent owners gain a basis to seek denial under § 42.104(b)(3) by pointing to the petitioner's litigation statements and any competing means-plus-function constructions on the record. The majority cites no Federal Circuit authority for this holding, and the concurrence relies on Federal Circuit cases on means-plus-function analysis and Samsung v. Prisua for a different ground. LEGAL TEST OR STANDARD: Under 37 C.F.R. § 42.104(b)(3), where the claim to be construed contains a means-plus-function limitation under § 112(f), the petition's construction must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. The Board found the rule mandated under these facts. At a minimum, the petition should have explained why the plain and ordinary meaning applies (why the inconsistent positions are warranted) or set forth an alternative means-plus-function construction. CTPG 45. TRIGGERING FACTS: In district court, petitioner argued the 'component' terms are means-plus-function terms that are indefinite, and said the issue would be most significant and case dispositive. The patent owner argued plain and ordinary meaning but also provided an alternative means-plus-function construction. In the petition, petitioner only said in a footnote (Pet. 7 n.3) that it applies plain and ordinary meaning, consistent with the patent owner's litigation position, and gave no § 112(f) analysis or structure. KEY QUOTE: "At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction." (Paper 12, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The majority follows 10x Genomics, Inc. v. Pres. and Fellows of Harvard Coll., IPR2023-01299, Paper 15 (PTAB Mar. 14, 2024), and the CTPG at 45, and clarifies, citing 10x Genomics, Inc. v. Bio-Rad Lab'ys, Inc., IPR2020-00086, Paper 8 at 18 (PTAB Apr. 27, 2020), that the rules do not necessarily prohibit inconsistent positions. PRACTICE TIP: If you have argued in district court that claim terms are means-plus-function terms, address § 112(f) squarely in the petition: either give an alternative means-plus-function construction identifying corresponding structure, or explain why a plain meaning position is warranted despite the inconsistency. Do not rely on a footnote reciting your litigation position.