EnOcean GmbH v. Face International Corp., 742 F.3d 955

EnOcean appealed a Board decision in an interference with Face International, where the Board found all EnOcean claims unpatentable over prior art including the Burrow PCT publication.
EnOcean’s U.S. application claimed a self-powered radio-frequency switch; inventors filed earlier German (May 24, 2000) and PCT (May 21, 2001) applications; priority to those earlier filings was critical to antedate Burrow (PCT filing Mar. 5, 2001).
The Board applied a presumption (37 C.F.R. § 41.207(c)) that EnOcean’s claims were unpatentable for the same reasons Face’s claims were, unless rebutted by priority to the earlier filings.
The Board held (1) several EnOcean “receiver” claims invoked 35 U.S.C. § 112, ¶ 6 despite lacking the word “means,” and (2) certain means-plus-function and receiver claims were not supported by the German/PCT written descriptions and thus were not entitled to the earlier priority dates.
The Federal Circuit vacated-in-part: it held the receiver claims do not invoke § 112, ¶ 6; both the means-plus-function “means for receiving” limitations and the receiver limitations are supported by the German and PCT disclosures for priority purposes; remanded for further proceedings and reconsideration of outstanding motions.

Issue	EnOcean's Argument	Face's Argument	Held
Whether the receiver claims invoke 35 U.S.C. § 112, ¶ 6 (means-plus-function)	“Receiver” is a known structural term to a person of ordinary skill and thus does not trigger § 112, ¶ 6; extrinsic evidence and expert testimony show the term connotes structure	“Receiver” is functional/black-box language that leaves out structure and therefore invokes § 112, ¶ 6	Receiver claims do not invoke § 112, ¶ 6; presumption against means-plus-function not overcome (vacated as to this issue)
Whether EnOcean’s means-plus-function and receiver claims can claim priority to the German and PCT applications	The earlier German/PCT disclosures, which refer to a “receiver” and a “single receiver,” provide sufficient written description because a skilled artisan would understand the corresponding structure	The priority documents only make passing reference and fail to expressly describe receiver structure, so they don’t support means-plus-function terms for priority	Board erred: the German/PCT disclosures sufficiently support both the means-for-receiving limitations and the receiver limitations for priority; Board’s contrary requirement of expressly describing receiver structure was incorrect (vacated and remanded)

Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350 (Fed. Cir. 2011) (test for whether claim term lacking “means” invokes § 112, ¶ 6)
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696 (Fed. Cir. 1998) (presumption that terms without “means” are structural)
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) (nouns that name known devices can avoid § 112, ¶ 6 despite functional phrasing)
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (discussion of functional/black-box claim language)
Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333 (Fed. Cir. 2010) (written-description requirement to claim benefit of earlier filing date)
In re Aoyama, 656 F.3d 1293 (Fed. Cir. 2011) (sufficiency of corresponding structure disclosure for means limitations)
Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010) (patents need not restate well-known structures; concise claims can rely on known art)