Trials@uspto.gov
`571-272-7822
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` Paper 6
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`Entered: October 26, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ETS-LINDGREN INC.,
`Petitioner,
`
`
`
`
`
`
`
`
`
`v.
`
`MICROWAVE VISION, S.A.,
`Patent Owner.
`____________
`
`Case IPR2015-01048
`Patent 7,443,170 B2
`____________
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and CHARLES J. BOUDREAU,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`

`
`Case IPR2015-01048
`Patent 7,443,170 B2
`
`
`I.
`
`BACKGROUND
`Petitioner, ETS-Lindgren Inc. (“ETS”), filed a Petition requesting inter
`partes review of claim 12 of U.S. Patent No. 7,443,170 B2 (Ex. 1001; “the ’170
`patent”).1 Paper 2 (“Pet.”). Patent Owner, Microwave Vision, S.A.
`(“Microwave”) filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). 2 We
`have jurisdiction under 35 U.S.C. §§ 6(b) and 314.3
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if
`“the information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” See 37 C.F.R. § 42.108(c).
`
`For the reasons given below, on this record, we are not persuaded that ETS
`has established a reasonable likelihood of prevailing with respect to its challenge to
`claim 12 of the ’170 patent. Accordingly, we deny the Petition and decline to
`institute an inter partes review of claim 12 of the ’170 patent.
`
`
`1 ETS contends that “there are several indefiniteness claim construction issues,”
`and that “[i]f the Board finds claim 12 indefinite, the Board should not institute
`review (and a finding of indefiniteness would then result in invalidation of the
`claims in the co-pending litigation).” Pet. 3–4. Our authorizing statute, however,
`limits our review of an inter partes review petition to determination(s) of
`patentability pursuant to 35 U.S.C. §§ 102 and 103 based on prior art consisting of
`patents and printed publications. 35 U.S.C. § 311(b). Thus, we do not make any
`determinations of indefiniteness.
`2 ETS asserts that the ’170 patent is assigned to Societe D’Applications
`Technologiques De L’Imagerie Micro-Ondes (FR) (“Satimo”) (Pet. 1), which
`Microwave represents was its former name (Paper 4, 1).
`3 The Board, acting on behalf of the Director, determines whether to institute
`review. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48757 (Aug. 14,
`2012).
`
`
`
`2
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`

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`Case IPR2015-01048
`Patent 7,443,170 B2
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`
`A. Related Proceedings
`The parties represent that the ’170 patent is asserted against ETS and another
`entity in Microwave Vision, S.A. et al. v. ESCO Technologies Inc. et al., Case No.
`1:14-cv-01153-SCJ (N.D. Ga.). Pet. 5; Paper 4, 1.
`B. The ’170 Patent
`The ’170 patent is directed to a device that “determines at least one
`characteristic of electromagnetic radiation emitted from a test object.” Ex. 1001,
`Abstract. The present invention is generally described to include a support that
`receives the object and a network of probes that is distributed along a substantially
`circular arc, so that the support is disposed in a plane formed by the network of
`probes or in a plane parallel to the plane formed by the network of probes. Id.
`The ’170 patent Specification recognizes that
`[i]n general, it is the object under test which rotates on itself around a
`vertical axis which corresponds to the diameter of the arc, but it can
`be envisaged, in a variant, that it is the arc of probes that rotates on
`itself, while the object under test remains fixed.
`
`Id. at 1:26–30. The Specification further acknowledges that the use of a network
`of probes imposes constraints on the dimension of the object under test. Id. at
`1:48–49.
`
`In order to circumvent this drawback and broaden the area of use of a given
`network, the Specification explains that the present invention includes
`means that allow the relative tilting of the network of probes and of
`the support in the plane of the network of probes or parallel to the
`latter, so as to angularly shift the network of probes and the support in
`relation to each other, and thus allow measurements to be taken in
`several relative angular positions of the network of probes and the
`object under test.
`
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`Id. at 13–19 (emphasis added); see id. at 2:25–27 (“means that allow the relative
`tilting of the network of probes and of the support in the plane of the network of
`probes or parallel to the latter”) (emphasis added).
`The Specification describes Figure 1, which includes “an arc 10 that
`includes a multiplicity of electromagnetic probes or measuring antennae 11,” “as
`well as a support 20 intended to carry the object” to be tested. Id. at 2:57–62.
`“[S]upport 20 is essentially a mast which extends from the ground 30 . . . close to
`the geometric center of the arc.” Id. at 2:62–64. “The arc 10 is fixed in relation to
`the ground, while the mast comprising the support 20 is driven in rotation around
`its main axis.” Id. at 2:65–67. The Specification states that, in the example
`illustrated in Figure 1, the means for tilting mast 20 in the plane of the arc includes
`“an electric motor 25 which drives an actuator 26.” Id. at 3:15–26. The
`Specification further states that the “actuator extends more or less horizontally in
`the plane of the arc, and is hinged to one end of the base.” Id. at 3:27–28.
`Actuator 26 tilts mast 20, “conferring upon it a more or less pivoting movement
`that is centred on the centre 40 of the arc.” Id. at 3:28–31. “To allow this tilting
`motion, the base of the mast 20 is equipped with a convex bottom surface 21,
`which rests, by means of one or more rollers 22, on a complementary concave
`surface (not shown) on which it runs when the actuator is operated.” Id. at 3:32–
`36.
`The Specification also describes “[a]nother mode of implementation . . .
`
`illustrated in Figure 2.” Id. at 3:39. “In this mode of implementation, the mast 20
`is mounted to rotate around its axis, while the arc 10 is mounted on rollers 50 that
`allow it to pivot on itself, in its plane, around the centre 40.” Id. at 3:40–43. The
`Specification further explains that “[a]n electric motor drive 60 is provided . . . in
`order to move the arc on itself with an angular motion of at least one angular
`
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`Case IPR2015-01048
`Patent 7,443,170 B2
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`pitch.” Id. at 3:44–46. The Specification further explains that “in one or other of
`the two variants which have been described,” “the object under test can itself be
`moved in translation perpendicularly to the plane of the network of probes.” Id. at
`3:51–53.
`C. Challenged Claim
`ETS challenges claim 12. Claim 12 recites as follows:
`12. A device for determining at least one characteristic of
`electromagnetic radiation emitted from a test object, said device
`comprising:
`a support for receiving the object;
`a network of probes distributed at a given pitch along a
`substantially circular arc, a main axis of the support being disposed in
`a plane formed by the network of
`probes or in a plane parallel to the plane formed by the network of
`probes; and
`means for providing a plurality of measurements using the
`network of probes, the plurality of measurements corresponding to a
`plurality of angular positions of a given one of the network of probes
`relative to the test object, and including:
`means for pivoting one or more of the network of probes and
`the support about a point located in the plane formed by the network
`of probes or about a point located in the plane parallel to the plane
`formed by the network of probes to vary, between successive ones of
`the plurality of measurements, an angle formed between the given one
`of the network of probes and the main axis of the support by a fraction
`of the angular pitch of the network of probes so that a total number of
`measurements in the plurality of measurements is greater than a total
`number of probes in the network of probes.
`
`Id. at 6:4–29.
`
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`D. References Relied Upon
`ETS relies upon the following references (Pet. 33–34):
`U.S. Patent No. 4,282,529, pursuant to 35 U.S.C. § 102(b), issued on
`August 4, 1981 (Ex. 1011) (“Speicher”)
`
`U.S. Patent No. 6,329,953 B1, pursuant to 35 U.S.C. § 102(b), issued
`on December 11, 2001 (Ex. 1005) (“McKivergan”)
`
`U.S. Patent No. 6,983,547 B2, pursuant to 35 U.S.C. § 102(e), filed on
`March 19, 2002, and issued on January 10, 2006 (Ex. 1012)
`(“Fleming”)
`
`Iversen, P.O. et al., Real-Time Spherical Near-Field Antenna Test
`Facility for Personal Communications Applications, pursuant to 35
`U.S.C. § 102(b), presented at conference on April 9–14, 2000 (Ex.
`1010) (“Iversen”)
`
`ETS also provides the declaration of Michael D. Foegelle, Ph.D., in
`support of its Petition. Ex. 1008.
`E. The Asserted Challenge
`ETS argues that challenged claim 12 is unpatentable based on the following
`grounds (Pet. 34–35):
`References
`Iversen and Speicher
`Iversen and Fleming
`McKivergan and Speicher
`McKivergan and Fleming
`Satimo presentation4
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`
`4 ETS asserts that, if the ’170 patent is not entitled to its French ancestor’s priority
`date, claim 12 is unpatentable under 35 U.S.C. § 103 based on the Satimo
`presentation. Pet. 34–35.
`
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`Case IPR2015-01048
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`
`II. ANALYSIS
`A.
`Claim Interpretation
`In determining whether to institute a review, we construe the claims. In an
`inter partes review, a claim in an unexpired patent is given its broadest reasonable
`interpretation in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`1278–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
`interpretation standard in enacting the AIA,” and “the standard was properly
`adopted by PTO regulation.”). Under the broadest reasonable interpretation
`standard, claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Because ETS has not identified the corresponding structure for the following
`“means for” limitation as required by 37 C.F.R. § 42.104(b)(3), and we cannot
`construe the limitation, we deny institution of an inter partes review of claim 12 of
`the ’170 patent.
`“means for pivoting one or more of the network of probes and the support”
`
`“An element in a claim for a combination may be expressed as a means . . .
`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.”
`35 U.S.C. § 112 ¶ 6.5 A limitation using the term “means for” creates a rebuttable
`
`
`5 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated
`35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’170 patent has a filing
`date before September 16, 2012 (effective date of the statute), we will refer to the
`pre-AIA version of 35 U.S.C. § 112.
`
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`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6. When
`construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we must
`first identify the claimed function, and we then look to the specification to identify
`the corresponding structure that performs the claimed function. Med.
`Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir.
`2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed.
`Cir. 2002). Our Rules specifically require that the petition identify the
`corresponding structure in proposing a construction for a means-plus-function
`claim limitation. Specifically, “[w]here the claim to be construed contains a
`means-plus-function or step-plus-function limitation, as permitted under 35 U.S.C.
`§ 112 [¶ 6], the construction of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts corresponding to each
`claimed function.” 37 C.F.R. § 42.104(b)(3). Furthermore, with respect to the
`second step, “structure disclosed in the specification is ‘corresponding’ structure
`only if the specification or prosecution history clearly links or associates that
`structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores,
`Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted);
`Cardiac Pacemakers, 296 F.3d at 1113 (“the structure must not only perform the
`claimed function, but the specification must clearly associate the structure with the
`performance of the function”). “This inquiry is undertaken from the perspective of
`a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at 1113.
`Claimed function
`ETS and Microwave agree that the “means for pivoting” limitation of
`claim 12 should be construed in accordance with 35 U.S.C. § 112 ¶ 6. Pet. 18–
`19; Prelim. Resp. 14–25. The parties, however, disagree as to the scope of the
`claimed function. According to ETS,
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`[a] key dispute in the parties’ underlying litigation is whether this
`claimed function requires movement of both ‘one or more of the
`network of probes’ and ‘the support,’ or if movement of one or the
`other is within the scope of the claim.
`
`Pet. 19. In the present Petition, ETS asserts that “[t]he ‘one or more’ language [of
`the means for pivoting limitation] unambiguously refers to the network of probes,
`namely that less than all of the probes may be moved.” Id. at 21 (emphasis
`added). ETS argues that the claimed function of this limitation requires
`movement of the network of probes and the support. Id. at 19. Microwave
`argues that the claimed function of this limitation is “pivoting the network of
`probes, the support, or both.” Prelim. Resp. 14. We need not decide whether the
`claimed function of the “means for pivoting” limitation is limited to pivoting both
`the network of probes and the support, as urged by ETS, or whether it also
`includes pivoting either the network of probes or the support, as urged by
`Microwave. For purposes of this Decision, we accept that the claimed function at
`least includes pivoting6 both the network of probes and the support, as urged by
`both parties.7 In other words, the parties agree that one of the claimed functions
`of the “means for pivoting” limitation is pivoting the network of probes and the
`support. “Where there are multiple claimed functions . . . the patentee must
`
`
`6 ETS uses the term “movement” in arguing the scope of the claimed function. Pet.
`19. However, “a court may not construe a means-plus-function limitation ‘by
`adopting a function different from that explicitly recited in the claim.’” JVW
`Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1331 (Fed. Cir. 2005)
`(quoting Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed.
`Cir. 1999)). Thus, we determine the claimed function requires “pivoting” as that is
`the term expressly recited in the claim limitation.
`7 Even under ETS’s construction, whereby the clause “at least one of” refers to the
`network of probes, and, thus, “less than all of the probes may be moved” (Pet. 21),
`the scope of the claimed function includes pivoting the entire network of probes
`and the support.
`
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`disclose adequate corresponding structure to perform all of the claimed
`functions.” Media Rights Techs., Inc. v. Capital One Fin. Corp., No. 2014-1218,
`2015 WL 5166358, *6 (Sept. 4, 2015) (quoting Noah Sys., Inc. v. Intuit Inc., 675
`F.3d 1302, 1318–19 (Fed. Cir. 2012)).
`Corresponding structure
`Having determined that the claimed function includes pivoting both the
`
`network of probes and the support, as urged by both parties, we next must
`ascertain the corresponding structure for the claimed function. Id. The claimed
`function is dual in nature—pivoting the network of probes and pivoting the
`support. ETS asserts that the “only structure disclosed for pivoting the support is
`at 3:22–38 of the ’170 patent (with reference to Figure 1).” Pet. 23 (emphasis
`added). Specifically, ETS argues that:
`under § 112 the structure corresponding to the claimed means for
`pivoting “the support about a point located in the plane formed by the
`network of probes” is limited to “an electric motor, an actuator that
`extends more or less horizontally in the plane of the arc and is hinged
`to one end of the base, a convex bottom surface on the base of a mast,
`which rests, by means of one or more rollers, on a complementary
`concave surface.”
`
`Pet. 24 (citing Ex. 1001, 3:22–28; 35 U.S.C. § 112 ¶ 6). Thus, ETS
`identifies several structures illustrated in Figure 1 as corresponding to the
`function of pivoting the support. ETS further asserts that:
`[a]s for the network of probes, the ’170 patent’s specification provides
`only one structure for moving any probe: “the arc 10 is mounted on
`rollers 50 that allow it to pivot on itself, in its plane, around the centre
`40. An electric motor drive 60 is provided for this purpose in order to
`move the arc on itself with an angular motion of at least one angular
`pitch.”
`
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`Pet. 25 (citing Ex. 1001, 3:40–49) (emphasis added). According to ETS, “the
`structure corresponding to the claimed ‘means for pivoting one or more of the
`network of probes’ is limited to an ‘arc mounted on rollers and an electric motor
`drive.’” Pet. 25 (citing 35 U.S.C. § 112 ¶ 6). Thus, ETS identifies several
`structures illustrated in Figure 2 as corresponding to the function of pivoting the
`network of probes.
`
`Microwave agrees with ETS’s proposed corresponding structures.
`Microwave states that it “has no objection” to the structures ETS identifies as
`corresponding to the “means for pivoting” “the support.” Prelim. Resp. 23.
`Microwave further states that it “does not object” to ETS’s characterization that
`“the structure responsible for pivoting the network of probes is an ‘arc mounted
`on rollers and an electric motor drive.’” Id. Importantly, neither party expressly
`states that the combination of structures disclosed in Figures 1 and 2 of the
`’170 patent corresponds to the agreed-upon aspect of the claimed function—
`pivoting the network of probes and pivoting the support.
`
`As we noted above, because this is a means-plus-function limitation under
`35 U.S.C. 112 ¶ 6, ETS’s proposed construction must identify the specific
`portions of the Specification that describe the structure, material, or acts
`corresponding to the claimed dual function. 37 C.F.R. § 42.104(b)(3).
`Moreover, the ’170 patent Specification must “clearly associate” structure with
`performance of the dual function. See Cardiac Pacemakers, 296 F.3d at 1113–
`14.
`ETS’s Petition is deficient for failing to identify structure that corresponds
`
`to the full scope of the claimed function. Although ETS urges that the claimed
`function of the “means for pivoting” limitation is movement of the network of
`probes and the support (Pet. 19), ETS does not identify corresponding structure
`
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`that performs the dual function—pivoting the network of probes and pivoting the
`support. Rather, ETS identifies structures disclosed in Figure 1 “for pivoting the
`support” (Pet. 23 (citing Ex. 1001, 3:22–38) and separate structures disclosed in
`Figure 2 for pivoting the probes (id. at 25 (citing Ex. 1001, 3:40–49)). ETS,
`however, does not identify structure that both pivots the network of probes and
`the support. Specifically, ETS does not argue expressly that the structure
`corresponding to the dual function of pivoting the network of probes and pivoting
`the support is the combination of these structures disclosed in Figures 1 and 2 of
`the ’170 patent. See Pet. 23–25.8 ETS does assert that “the patent never refers to
`Figures 1 and 2 as mutually exclusive ‘embodiments’” and rather that “it uses two
`figures to describes the operation of the two moving components.” Id. at 22.
`Although the ’170 patent Specification does not refer to the structures in Figures
`1 and 2 as mutually exclusive, that silence alone is insufficient to “clearly
`associate” the combination of structures disclosed in Figures 1 and 2 as
`
`
`8 ETS’s petition is also deficient under 37 C.F.R. § 42.104(b)(3) because it does
`not identify corresponding structure for its own proposed construction. ETS
`argues that the “one or more” claim language refers to the network of probes and
`that “less than all of the probes may be moved.” Pet. 21. As Microwave argues
`(Prelim. Resp. 15), however, ETS does not identify any structure in the ’170 patent
`Specification that corresponds to pivoting fewer than all of the probes in the
`network of probes. See Pet. 19–25. ETS contends that the Specification “provides
`only one structure for moving any probe” (Pet. 25 (citing Ex. 1001, 3:40–49)), and
`identifies an “arc mounted on rollers and an electric motor drive.” Pet. 25. The
`Specification explains, however, that the rollers 50 allow the arc (i.e., the entire
`network of probes) to pivot on itself and that electric motor drive 60 is provided for
`the purpose of moving the arc on itself with an angular motion. Ex. 1001, 3:41–46.
`ETS does not explain how the structures disclosed in this embodiment perform,
`and, thus, correspond to, pivoting less than all of the probes in the network of
`probes.
`
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`corresponding to the dual function. ETS’s failure to comply with 37 C.F.R.
`§ 42.104(b)(3) is basis alone to deny an inter partes review of claim 12.
`
`Furthermore, even if we were to overlook the deficiency in ETS’s Petition,
`we are not persuaded that the ’170 patent Specification clearly associates the
`combination of separate structures disclosed in Figures 1 and 2 as corresponding
`to the claimed dual functions. Similar to ETS’s position, Microwave’s
`Preliminary Response is likewise unhelpful in identifying the corresponding
`structure for the dual function. Microwave contends that:
`the ’170 Patent teaches: (a) an embodiment in which the support is
`pivoted, i.e., column 3, lines 3-38 and Fig. 1; (b) an embodiment in
`which the entire network of probes is pivoted, i.e., column 3, lines 39-
`49 and Fig. 2; and (c) that those embodiments may be combined, i.e.,
`column 2, lines 12-18 and 25-35.
`
`Prelim. Resp. 15. The disclosure at column 2, lines 12–18 and 25–35, of the ’170
`patent Specification, however, is not referring to the structures disclosed in
`Figures 1 and 2. That disclosure is a “Summary of the Invention” and states that
`the invention “includes means that allow the relative tilting of the network of
`probes and of the support in the plane” (Ex. 1001, 2:13–14 (emphasis added)) and
`again that the invention “includes means that allow the relative tilting of the
`network of probes and of the support in the plane” (id. at 2:25–26). There is no
`mention of the structures disclosed in Figures 1 and 2, nor their combination.
`Thus, the disclosure at column 2, lines 12–18 and 25–35, of the ’170 patent
`Specification does not “clearly associate” the combination of structures disclosed
`in Figures 1 and 2 as corresponding to the claimed dual function of pivoting the
`network of probes and pivoting the support.
` “[M]ultiple structures can perform a single claimed function, [but] this is
`
`so only where the claim language permits, and only where the specification
`
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`clearly identifies corresponding structures.” Cardiac Pacemakers, 296 F.3d at
`1117. Here, the claim language itself does not indicate whether the limitation
`requires one means or the combination of separate means from separate
`embodiments. As the Federal Circuit has recognized, claim language that recites
`“‘means for doing x and y’” “could potentially be ambiguous about whether the
`limitation required one means for performing both functions x and y, or simply
`one means for performing function x and one (potentially different) means for
`performing function y.” Cardiac Pacemakers, 296 F.3d at 1115. The limitation
`at issue here—“means for pivoting one or more of the network of probes and the
`support”—arguably is not identical to “means for doing x and y” because it
`depends on whether the “one or more of” claim language modifies “the network
`of probes,” as urged by ETS, or the entire clause “the network of probes and the
`support,” as urged by Microwave. The Federal Circuit’s guidance, however, is
`helpful nonetheless because, as discussed above, both parties agree that the
`claimed function includes pivoting the network of probes and the support. Yet,
`the claim language does not indicate whether that function is performed by one
`means or the combination of separate structures disclosed in two different
`embodiments. See Ishida Co. v. Taylor, 221 F.3d 1310, 1317 (Fed. Cir. 2000)
`(construing the claims to cover separate structures for performing “stripping” and
`“sealing” functions in means-plus-function limitation reciting “[a] pair of
`opposing sealing and stripping means . . . being adapted to cooperate . . . .”)
`(emphasis added).
`
`Moreover, the Specification itself does not combine the structures disclosed
`in Figure 1, which the parties contend correspond to the function of pivoting the
`support, and the structures disclosed in Figure 2, which the parties contend
`correspond to the function of pivoting the network of probes. As noted above,
`
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`“multiple structures can perform a single claimed function.” Cardiac
`Pacemakers, 296 F.3d at 1117. Specifically, that “each means-plus-function
`element in a claim can only be read on a single, complete mechanical element of
`the invention, which performs the recited function without aid from other
`elements of the invention” is a misconception. Id. (quoting In re Knowlton, 481
`F.2d 1357, 1368 (CCPA 1973)). However, an “‘application [must] describe[] and
`identif[y] apparatus combinations which perform each of the functions called for
`by the means-plus-function recitations of the claims, and further describe[] how
`those combinations are made’” in order for the claim to be supported adequately
`by the specification. Id. (emphasis in original). The ’170 patent Specification
`does not describe and identify an apparatus combination that performs both
`pivoting the network of probes and pivoting the support.
`
`Because the ’170 patent Specification does not disclose an apparatus
`combination that performs both pivoting the network of probes and pivoting the
`support, neither the claimed function proposed by ETS nor Microwave has
`corresponding structure. As discussed above, ETS contends the claimed function
`of this limitation requires pivoting the network of probes and the support (Pet.
`19), but ETS does not identify a corresponding structure for this function.
`Moreover, Microwave contends that the claimed function of this limitation is
`“pivoting the network of probes, the support, or both.” Prelim. Resp. 14. Thus,
`one of the functions under Microwave’s proposed construction also is pivoting
`the network of probes and the support, but Microwave, in its proposed
`construction, also fails to identify a corresponding structure for this function. See
`Media Rights Techs., 2015 WL 5166358, *6 (stating that patentee must disclose
`adequate corresponding structure to perform all of the claimed functions). Thus,
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`Case IPR2015-01048
`Patent 7,443,170 B2
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`we can discern no corresponding structure for the claimed function of the “means
`for pivoting” limitation irrespective of which construction we might adopt.
`
`Because there is no disclosure in the ’170 patent Specification, either
`identified by ETS or our review of the Specification, that clearly associates
`structure with pivoting the network of probes and the support, there is no
`disclosed corresponding structure for the “means for pivoting one or more of the
`network of probes and the support,” as recited in claim 12. For these reasons, we
`determine that Petitioner has not met its burden of showing a reasonable
`likelihood of prevailing in any of its challenges and that, on this record, the
`recitation “means for pivoting one or more of the network of probes and the
`support” cannot be construed.
`III. CONCLUSION
`Accordingly, because we determine that ETS has not identified structure
`corresponding to the “means for pivoting” limitation recited in claim 12 of the ’170
`patent, as required by 37 C.F.R. § 42.104(b)(3), and further, because we cannot
`construe the challenged claim, we deny ETS’s Petition for inter partes review.
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
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`Case IPR2015-01048
`Patent 7,443,170 B2
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`PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Douglas A. Robinson
`HARNESS, DICKEY & PIERCE, P.L.C.
`rtelscher@hdp.com
`drobinson@hdp.com
`
`PATENT OWNER:
`
`Robert B. Hander
`Marcus Millet
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
`rhander.ipr@ldlkm.com
`mmillet.ipr@ldlkm.com
`
`
`
`
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