In EnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121. The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not invoke the means-plus-function requirements of 35 U.S.C. § 112, ¶ 6, and (2) the related German and PCT Applications recited a “receiver” such that one of ordinary skill in the art would understand the bounds of the invention as to allow the U.S. Application to claim the benefit of the German and PCT applications’ priority dates.
On June 25, 2010, the Board declared an interference between EnOcean and Face International—the real party of interest in U.S. Patent No. 7,084,529, directed at similar self-powered switches to those claimed in the EnOcean application. After finding the claims of the ’529 Patent unpatentable under 35 U.S.C. § 103, the Board applied the presumption that the claims in EnOcean’s Application were also unpatentable. EnOcean argued that the claims of its Application should be entitled to the filing date of its related German and PCT applications, which would antedate the cited art. The Board held the claims of EnOcean’s Application were means-plus-function claims and were not entitled to the earlier priority date.
On appeal, the Federal Circuit first examined the claims of EnOcean’s Application which read on “a signal receiver for receiving” and a “a receiver adapted to receiving” (the “receiver claims”). The Federal Circuit disagreed with the Board’s finding that “there is no distinction in meaning between ‘receiver’ and ‘signal receiving means,’” noting that the lack of the word “means” entitles the claims to a presumption that they are not means-plus-function claims and then cited to extensive evidence that one of skill in the art would sufficiently understand the structure defined by the term “receiver.”
The Court then turned to the question of whether the written description of the German and PCT Applications were drafted with sufficient detail as to conclude that the inventor invented the claimed invention. The Court decided that one of ordinary skill in the art would understand the bounds of the invention “merely by reading the term ‘receiver’” in the German and PCT Applications. The Court further held that the Board’s requirement that the German and PCT Applications “expressly describe the structure of the receiver” applied the incorrect standard.