Skky, Inc. v. Mindgeek, S.A.R.L.
859 F.3d 1014
| Fed. Cir. | 2017Background
- Skky, Inc. owns U.S. Patent No. 7,548,875 claiming a method to wirelessly deliver compressed audio/visual files to a “wireless device means”; some embodiments disclose software-only (single processor) and accessory embodiments (multiple processors).
- MindGeek petitioned for inter partes review (IPR), arguing claims were obvious over Rolf (a prior patent for wireless music to cell phones) with MP3 Guide and OFDM/FM for claim 22.
- During prosecution the Examiner had indicated § 112 ¶ 6 (means-plus-function) applied, but the issued claims included the phrase “wireless device means.”
- The PTAB found “wireless device means” does not invoke § 112 ¶ 6 and construed claim 21’s “segment” as a “playable portion,” then held claims 1–3, 5, and 15–23 obvious over the cited references.
- Skky appealed, arguing (1) the term should be means-plus-function or require multiple/specialized processors, (2) the obviousness findings were unsupported, and (3) the Board abused discretion by not striking MindGeek’s reply brief.
Issues
| Issue | Skky's Argument | MindGeek's Argument | Held |
|---|---|---|---|
| Whether “wireless device means” invokes § 112 ¶ 6 | Presumption from the word “means”; term performs functions (request, receive, process) so § 112 ¶ 6 applies | Term denotes structure ("wireless device") and does not recite functions; not means-plus-function | Not means-plus-function; term denotes sufficient structure |
| Whether claims require multiple or specialized processors | Written description and prosecution history require multiple processors or a specialized multimedia processor | Specification discloses a software embodiment using a single conventional processor; construction cannot import those limits | Claims do not require multiple or specialized processors |
| Whether challenged claims are obvious over Rolf + MP3 Guide (+ OFDM/FM for claim 22) | Rolf doesn’t disclose segments (only full songs); combining OFDM/FM would be inoperable/different protocols and lack motivation to combine | Rolf discloses downloadable songs (playable portions of albums); OFDM/FM teaches retrofit into existing systems—motivation to combine | Substantial evidence supports Board’s findings; claims are unpatentable as obvious |
| Whether PTAB abused discretion by denying motion to strike MindGeek’s reply | Reply raised new arguments (e.g., means-plus-function) and should be struck | Reply responded to positions taken by Board and Skky; Skky had opportunity to respond (surreply allowed) | No abuse of discretion; denial affirmed |
Key Cases Cited
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (standard of review for claim construction in PTAB appeals)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (reviewing subsidiary factual findings in claim construction)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (test for means-plus-function under § 112 ¶ 6)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (legal framework for obviousness analysis)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (IPR uses broadest reasonable interpretation for claim construction)
- In re Ethicon, Inc., 844 F.3d 1344 (Fed. Cir. 2017) (treatment/weight of expert testimony in PTAB proceedings)