United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE TELES AG 

INFORMATIONSTECHNOLOGIEN AND SIGRAM 

SCHINDLER BETEILIGUNGSGESELLSCHAFT 

MBH

______________________ 

2012-1297

______________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences in 

Reexamination No. 90/010, 017. 

______________________ 

Decided: April 4, 2014

______________________ 

MICHAEL D. KAMINSKI, Foley & Lardner LLP, of 

Washington, DC, argued for appellants. With him on the 

brief were HOWARD N. SHIPLEY, GEORGE E. QUILLIN, and 

RYAN A. SCHMID. 

AMY J. NELSON, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of 

Arlington, Virginia argued for appellee. With her on the 

brief was NATHAN K. KELLEY, Deputy Solicitor. Of counsel 

was SCOTT C. WEIDENFELLER, Associate Solicitor. 

FRANK E. SCHERKENBACH, Fish & Richardson, P.C., of 

Boston, Massachusetts for amicus curiae. Of counsel on 

the brief was CRAIG E. COUNTRYMAN, of San Diego, Cali-
2 IN RE: TELES AG INFORMATION

fornia; and HOWARD G. POLLACK and MICHAEL R.

HEADLEY, of Redwood City, California. 

______________________ 

Before DYK, MOORE, and WALLACH, Circuit Judges.

DYK, Circuit Judge.

Teles AG Informationstechnologien and Sigram 

Schindler Beteiligungsgesellschaft MBH (collectively, 

“Teles”) own all substantial rights in U.S. Patent No. 

6,954,453 (“the ’453 patent”) on a method and apparatus 

for transmitting data in a telecommunications network. 

The Patent and Trademark Office (“PTO”) conducted an 

ex parte reexamination of the ’453 patent and rejected 

claims 34–36 and 38 as obvious under 35 U.S.C. § 103.

The Board of Patent Appeals and Interferences (“Board”)

affirmed. Teles brought suit in the United States District 

Court for the District of Columbia, challenging the 

Board’s decision pursuant to 35 U.S.C. § 145 (2006). We 

agree with the district court that it lacked subject matter 

jurisdiction, and hold that the version of § 145 in effect at 

the time did not authorize a patent owner in an ex parte

reexamination to bring suit in district court challenging 

the Board’s action. But we hold that the district court 

erred in dismissing the case and instead should have 

transferred the case as it attempted to do after the dismissal. We treat the case as having been transferred to 

this court and consider it as an appeal from the Board’s 

decision. We affirm the Board’s rejection of claim 35 as 

obvious under § 103. 

BACKGROUND

I 

In 1980, Congress established a system of ex parte

reexamination that allowed patent owners and third 

parties to ask the PTO to reexamine claims of issued 

patents in view of prior art. See An Act to Amend the 
IN RE: TELES AG INFORMATION 3

Patent and Trademark Laws, Pub. L. No. 96-517, 94 Stat. 

3015 (1980) (codified at 35 U.S.C. §§ 302–07 (1986)). We 

have recognized the “important public purpose” behind

reexamination as “part of a larger effort to revive United 

States industry’s competitive vitality by restoring confidence in the validity of patents issued by the PTO.” Patlex 

Corp. v. Mossinghoff, 758 F.2d 594, 601 (Fed Cir. 1985); 

see also H.R. Rep. No. 96-1307(I), at 3 (1980), reprinted in

1980 U.S.C.C.A.N. 6460, 6462 (describing the goal of 

“strengthen[ing] investor confidence in the certainty of 

patent rights by creating a system of administrative 

reexamination of doubtful patents”). 

Section 145 has long authorized patent applicants to 

challenge the Board’s adverse examination decisions in 

district court instead of directly appealing to this court 

pursuant to 35 U.S.C. § 141. See Kappos v. Hyatt, 132 S. 

Ct. 1690, 1694 (2012). After the reexamination statute 

was enacted, we allowed patent owners to challenge 

adverse ex parte reexamination decisions in district court

pursuant to § 145. See Joy Techs., Inc. v. Manbeck, 959 

F.2d 226, 227 (Fed. Cir. 1992). In 1999, Congress amended § 145 and related provisions. This case raises the 

question of whether § 145 civil actions remained available 

to patent owners seeking to challenge adverse reexamination decisions after Congress amended the statute in 1999 

and before 2011, when Congress amended the statute to 

clarify that § 145 review was not available to patent 

owners. 

II

Teles is the owner of the ’453 patent, which issued on 

October 11, 2005. ’453 patent, at [45]. The ’453 patent 

recites a “method for transmitting data in a telecommunications network and switch for implementing said method.” Id. at [54]. In August 2007, a third party filed a 

request that the PTO conduct an ex parte reexamination 

of the ’453 patent. The examiner rejected claims 34–36 
4 IN RE: TELES AG INFORMATION

and claim 38 under 35 U.S.C. § 103 as obvious over U.S. 

Patent No. 6,069,890 (“White”) combined with either U.S. 

Patent No. 6,137,792 (“Jonas”) or U.S. Patent No. 

4,996,685 (“Farese”). Teles appealed the rejections to the 

Board, which affirmed. Teles then sought review of the 

Board’s decision in the United States District Court for 

the District of Columbia pursuant to § 145. The district 

court dismissed the case for lack of subject matter jurisdiction, holding that, after the 1999 amendments, § 145 

proceedings could not be maintained by patent owners. 

Teles appealed the district court’s dismissal for lack of 

subject matter jurisdiction to this court pursuant to 28 

U.S.C. § 1295(a)(1). Teles did not appeal the Board’s 

decision to this Court. 

DISCUSSION

I 

We address initially the question of jurisdiction. 

While we have jurisdiction to review the district court’s 

dismissal pursuant to § 1295(a)(1), the question is whether we also have jurisdiction to review the Board’s action 

(if the district court lacked jurisdiction). After the district 

court granted the motion to dismiss, it also purported to 

transfer the case to this court pursuant to 28 U.S.C. 

§ 1631. A transfer “is not proper when combined with a 

dismissal.” Hollyanne Corp. v. TFT, Inc., 199 F.3d 1304, 

1307 (Fed. Cir. 1999); see also Christianson v. Colt Indus. 

Operating Corp., 486 U.S. 797, 818 (1988). Once the 

district court dismissed the case for lack of jurisdiction, it 

“was without authority to transfer the case.” Tootle v. 

Sec’y of Navy, 446 F.3d 167, 173 (D.C. Cir. 2006). 

But we hold that the district court erred in dismissing 

the case rather than transferring it. Once the district 

court held that it lacked jurisdiction, it should have 

transferred the case pursuant to § 1631. See Paul v. 

I.N.S., 348 F.3d 43, 47 (2nd Cir. 2003); see also Kolek v. 
IN RE: TELES AG INFORMATION 5

Engen, 869 F.2d 1281, 1283–84 (9th Cir. 1989). Here, as 

in Paul and Kolek, the statutory deadline for filing an 

appeal to this court had passed, and no evidence suggested bad faith in Teles’ filing with the district court. Under 

these circumstances, it was in the interest of justice to 

transfer the case pursuant to § 1631, and we “treat 

[Teles’] petition for review, which was timely filed with 

the district court, as if it had been properly transferred” to 

this court rather than dismissed. Paul, 348 F.3d at 47 

(citing Miller v. Hambrick, 905 F.2d 259, 262 (9th Cir. 

1990) (district court correctly determined that it lacked 

jurisdiction but abused its discretion in failing to consider 

whether transfer was in the interest of justice)); see also

Kolek, 869 F.2d at 1284 (treating dismissal as transfer 

where appellate court had exclusive jurisdiction and 

timely filing deadline had passed); In re McCauley, 814 

F.2d 1350, 1352 (9th Cir. 1987) (reviewing merits of 

dismissed appeal as if properly transferred to appellate 

court).

In reviewing the case as though the district court had 

transferred the case, we address (1) the district court’s 

jurisdiction, and (2) if the district court lacked jurisdiction, the Board’s decision on the merits. We review both 

the district court’s dismissal for lack of jurisdiction and 

the question of statutory interpretation underlying that 

dismissal de novo. Mudge v. United States, 308 F.3d 1220, 

1224 (Fed. Cir. 2002) (citing Strickland v. United States, 

199 F.3d 1310, 1313 (Fed. Cir. 1999) and Muniz v. United 

States, 972 F.2d 1304, 1309 (Fed. Cir. 1992)). We review 

the Board’s decisions de novo for errors of law and for 

substantial evidence as to questions of fact. In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1351 (Fed. Cir. 

2014) (citing In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 

(Fed. Cir. 2012)).
6 IN RE: TELES AG INFORMATION

II 

On its face, even before the 1999 amendments, § 145 

only provided for district court actions brought by patent 

“applicants.” Nonetheless, in Joy Technologies, we construed § 145 as applicable to a “patent owner” involved in 

an ex parte reexamination. 959 F.2d at 229. This construction of the statute was continued in later cases. See 

Takeda Pharm. Co., Ltd. v. Doll, 561 F.3d 1372 (Fed. Cir. 

2009); In re Lueders, 111 F.3d 1569, 1577, n.14 (Fed. Cir. 

1997); Boeing Co. v. Comm’r of Patents & Trademarks, 

853 F.2d 878, 881 (Fed. Cir. 1988). 

In 1999, Congress amended the Patent Act to create a 

system of inter partes reexamination that allowed third 

parties who had requested the reexamination to participate actively in the PTO reexamination process.1 When 

Congress created the inter partes reexamination system, 

it changed the text of existing statutory provisions, including §§ 134, 141, and 145. The district court concluded 

that these changes made § 145 unavailable to patent 

owners (as opposed to patent applicants). 

First, Congress amended § 141, which provided for 

appeals of Board decisions to this court, by inserting an 

express limitation on the appeal rights of patent owners

in any reexamination proceeding: “A patent owner in any 

1 See American Inventors Protection Act (“AIPA”), 

enacted as part of the Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-

113, 113 Stat. 1501 (1999); 35 U.S.C. §§ 311, 316; see also

145 Cong. Rec. H6944 (1999) (statement of Rep. Dana 

Rohrabacher) (describing legislative effort to “further 

encourage potential litigants to use the PTO as a[n] 

avenue to resolve patentability issues . . . [by] creat[ing] 

an additional reexam option that permits a 3rd party 

requestor to file additional written briefs”). 

 
IN RE: TELES AG INFORMATION 7

reexamination proceeding dissatisfied with the final 

decision in an appeal to the Board of Patent Appeals and 

Interferences under section 134 may appeal the decision 

only to the United States Court of Appeals for the Federal 

Circuit.” 35 U.S.C. § 141 (2000) (emphases added). 

Second, Congress changed the substance and structure of § 134, governing appeals to the Board. Before 

1999, § 134 mentioned only patent applicants: “An applicant for a patent, any of whose claims has been twice 

rejected, may appeal from the decision of the primary 

examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.” 35 U.S.C. 

§ 134 (1994). As amended, the section for the first time

addressed patent applicants, patent owners, and third 

party requesters individually, as follows:

a) PATENT APPLICANT.—An applicant for a 

patent, any of whose claims has been twice rejected, may appeal from the decision of the administrative patent judge to the Board of Patent

Appeals and Interferences, having once paid the 

fee for such appeal.

(b) PATENT OWNER.—A patent owner in 

any reexamination proceeding may appeal from 

the final rejection of any claim by the administrative patent judge to the Board of Patent Appeals 

and Interferences, having once paid the fee for 

such appeal.

(c) THIRD-PARTY.—A third-party requester 

in an inter partes proceeding may appeal to the 

Board of Patent Appeals and Interferences from 

the final decision of the administrative patent 

judge favorable to the patentability of any original 

or proposed amended or new claim of a patent, 

having once paid the fee for such appeal. The 

third-party requester may not appeal the decision 

of the Board of Patent Appeals and Interferences. 
8 IN RE: TELES AG INFORMATION

35 U.S.C. § 134 (2000).2 

Third, Congress amended § 145, which previously referenced § 134 generally, to refer only to § 134(a), governing patent applicants: 

An applicant dissatisfied with the decision of the 

Board of Patent Appeals and Interferences in an 

appeal under section 134(a) of this title may, unless appeal has been taken to the United States 

Court of Appeals for the Federal Circuit, have 

remedy by civil action against the Director in the 

United States District Court for the District of Columbia . . . . 

35 U.S.C. § 145 (2000) (emphasis added). On their face, 

these amendments would appear to restrict § 145 appeals 

to patent applicants. However, Teles argues that § 145 

continued to be available to patent owners. 

Teles’ first argument is that the phrase in § 141 stating that a patent owner “may appeal the [adverse reexamination] decision only to the United States Court of 

Appeals for the Federal Circuit” does not preclude an 

owner from invoking the provisions of §§ 145 and 306 

because a civil action under § 145 is not an “appeal.” 

Under Teles’ interpretation, the “only” restriction limits 

patent owners’ appeals to this court as opposed to other 

circuit courts and does not limit the availability of § 145 

district court review to patent owners. But this reading 

makes the provision entirely superfluous because this 

court already had exclusive jurisdiction over decisions of 

the Board. 28 U.S.C. § 1295 (a)(4)(A) (1994). Significantly, 

§ 141 did not subject patent applicants to a similar limitation, stating that “[a]n applicant dissatisfied with the 

2 In 2002, Congress amended § 134, substituting 

“primary examiner” for “administrative patent judge.” 35 

U.S.C § 134 (2006).

 
IN RE: TELES AG INFORMATION 9

decision in an appeal to the Board of Patent Appeals and 

Interferences under section 134 of this title may appeal

the decision to the United States Court of Appeals for the 

Federal Circuit.” 35 U.S.C. § 141 (2000) (emphasis added). 

If the “only” limitation were designed to restrict appeals 

to this court, rather than other circuit courts, it is hard to 

understand why Congress would not employ similar 

language as to patent applicants. 

Teles’ second argument is that the conclusion that the 

1999 amendments restricted § 145 to patent applicants is 

inconsistent with the language of § 306, pertaining to 

appeals by patent owners in ex parte reexaminations. 

After the 1999 amendments, § 306 continued to read:

The patent owner involved in a reexamination 

proceeding under this chapter may appeal under 

the provisions of section 134 of this title, and may 

seek court review under the provisions of section 

141 to 145 of this title, with respect to any decision 

adverse to the patentability of any original or proposed amended or new claim of the patent.

35 U.S.C. § 306 (2000) (emphasis added). Teles argues 

that the reference in § 306 to “the provisions of section 

141 to 145” shows that § 145 continues to be available to 

patent owners. But this inconsistency in retaining a 

reference to § 145 in § 306 does not undermine the clear 

intention of the 1999 amendments to eliminate § 145 as to 

patent owners. 

 In Chickasaw Nation v. United States, the Supreme

Court considered a similar question involving an apparent 

contradiction between statutory language and an internal 

cross-reference. 534 U.S. 84 (2001). There, the question 

was whether Indian tribes were exempt from paying 

certain taxes. One subsection of the statute stated that

“Internal Revenue Code provisions that ‘concer[n] the 

reporting and withholding of taxes’ with respect to gambling operations shall apply to Indian tribes in the same 
10 IN RE: TELES AG INFORMATION

way as they apply to the States,” but also stated “in its 

parenthetical that those provisions ‘includ[e]’ Internal 

Revenue Code ‘chapter 35.’” Id. at 87 (alterations in 

original). Chapter 35, however, said “nothing about the 

reporting or withholding of taxes, [but] simply impose[d]

taxes . . . from which it exempt[ed] certain statecontrolled gambling activities.” Id. The Indian tribes 

claimed that the chapter 35 reference exempted them 

from paying taxes from which states were similarly 

exempt. Id. 

Faced with this apparent contradiction, the Supreme 

Court held that “[t]he language of the statute is too strong 

to bend as the Tribes would wish—i.e., so that it gives the 

chapter 35 reference independent operative effect.” Id. at 

89. The Court explained that “the language outside the 

parenthetical is unambiguous. It says without qualification that the subjection applies to ‘provisions . . . concerning the reporting and withholding of taxes.’” Id. In light of 

such strong and unambiguous language, making the 

chapter 35 reference effective on its own would have 

required “seriously rewriting the language of the rest of 

the statute.” Id. Rather than reach that result, the Court 

concluded that “in context, common sense suggests that 

the cross-reference is simply a drafting mistake,” and that 

Congress “unintentionally failed to remove what had 

become a superfluous numerical cross-reference.” Id. at

91, 92. The same is evidently true here with respect to the 

retention of the cross-reference to § 145 in § 306. 

The fact that in the case of an inter partes reexamination, § 315, as of the time of the 1999 amendments, provided for an appeal by the patent owner “under the 

provisions of sections 141 through 144,” 35 U.S.C. 

§ 315(a)(1) (2000), merely confirms the likelihood that the 

reference to § 145 in § 306 was a drafting error. Moreover, 

the fact that § 145 on its face applied only to “applicants” 

and not owners helps to explain why Congress could have 

failed to focus on the drafting error in § 306. 
IN RE: TELES AG INFORMATION 11

Teles argues, however, that here, legislative history 

demonstrates that Congress deliberately retained the 

reference to § 145 in § 306. Teles points out that bills 

proposed before 1999 would have amended § 306 to eliminate the reference to § 145, and that these bills were not 

adopted. This does not assist Teles. As the Supreme Court 

held in Solid Waste Agency of N. Cook Cnty. v. U.S. Army 

Corps of Eng’rs, reliance on failed legislative proposals is 

disfavored as a means of inferring legislative intent. 531 

U.S. 159, 169 (2001). 

Teles also relies on the fact that during consideration 

of the 1999 amendments, one of the bills proposed to 

amend § 306 by eliminating the reference to § 145. See

American Inventors Protection Act of 1999, H.R. 1907 

106th Cong. (as introduced); see also H. Rep. 106-287(I), 

at 59–60 (Aug. 3, 1999) (describing proposed changes to 

§ 306). But the proposed section made an even more 

significant change: it gave third party requesters in inter 

partes examinations the right to appeal Board decisions to 

this court or to become parties in appeals taken by patent 

owners. When the bill was reported out of the House 

Judiciary Committee, this provision was removed.3 The 

debate on the provision suggests nothing about a decision 

to retain § 145 for patent owners, but demonstrates that 

the provision was removed because of opposition to giving 

appeal rights to third parties in ex parte examinations. 

During the House debate over the bill, Representative 

Lofgren asked about this change, but only with respect to 

the removal of third parties’ appeal rights. 145 Cong. Rec. 

6942 (statement of Rep. Zoe Lofgren). The response to 

3 Although third parties in inter partes examinations were given the right to appeal to this court in 2002, 

Pub. L. 107-273 § 13106(c), such appeals remain unavailable to third parties in ex parte examinations. See 35 

U.S.C. § 141 (2012).

 
12 IN RE: TELES AG INFORMATION

Representative Lofgren’s question similarly focused on 

the impact it would have on the rights of third party 

requesters, not patent owners. See 145 Cong. Rec. H6942 

(statement of Rep. Coble) (explaining that the change 

“was done for the benefit of the independent inventors to 

balance the interest of a third party with those of a . . . 

patentee, by allowing a third party to pursue reexamination . . . while assuring that a patentee would not be 

subject to harassment in such proceedings”). There was no 

suggestion that the provision was rejected in an attempt 

to retain § 145 review for patent owners.4

The only specific reference to the appeal rights of patent owners is Senator Lott’s statement that “[t]he patentee is not entitled to the alternative of an appeal of an 

inter partes reexamination to the U.S. District Court for 

the District of Columbia. Such appeals are rarely taken 

from ex parte reexamination proceedings under existing 

law and its removal should speed up the process.” 145 

Cong. Rec. S14720. Interestingly, Senator Lott viewed the 

amendment to § 141 discussed above as precluding § 145 

review: “a patent owner in a reexamination proceeding 

may appeal an adverse decision . . . only to the U.S. Court 

of Appeals for the Federal Circuit as earlier noted.” Id. at 

4 Teles’ other references to statements during floor 

debates do not show that the § 145 reference remained 

because of legislative intent rather than inadvertence.

See, e.g., 145 Cong. Rec. H6942 (statement of Rep. Zoe 

Lofgren) (“[T]he bill was amended to retain existing law 

for ex parte reexaminations . . . .”); 145 Cong. Rec. S14720 

(statement of Sen. Trent Lott) (“Subtitle F leaves existing 

ex parte reexamination procedures in Chapter 30 of title 

35 intact.”). These statements do not say anything about 

the appeal rights of patent owners after completion of the 

reexamination. 

 
IN RE: TELES AG INFORMATION 13

S14721. These statements hardly indicate a desire to 

retain § 145 review for patent owners. 

Finally, Teles argues that the 2011 amendments to 

§ 306 show that the 1999 amendments left the appeal 

rights of patent owners intact. When Congress enacted 

the America Invents Act in 2011, it amended § 306 by 

limiting patent owners to review “under the provisions of 

sections 141 to 144.” See Leahy-Smith America Invents 

Act (“AIA”), Pub. L. No. 112-129, 125 Stat. 284 (2011) 

(codified as amended at 35 U.S.C. § 306 (2011)). The 2011 

amendments thus removed the cross-reference to § 145 in 

§ 306 (but were not retroactive). Teles argues that this 

change demonstrates that § 306 before the changes preserved § 145 for patent owners. 

Teles’ theory contradicts the legislative history, which 

recognized that the amendments corrected a drafting 

error in the 1999 legislation: “§ 306 is amended to conform to the changes made by § 4605 of the American 

Inventors Protection Act of 1999, Public Law 106-113 to 

§§ 134 and 141 of Title 35.” H.R. Rep No. 112-98(I), at 77 

(2011) (Statement of Rep. Smith) (June 1, 2011); see also

157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) (statement 

of Sen. Kyle) (“It is fairly apparent, however, that [the 

authority for a patent owner to bring a civil action under 

§ 145] was intended to be eliminated by the amendments 

made by section 4605 of the American Inventors Protection Act of 1999, Public Law 106-113, to sections 134 and 

141 of Title 34 . . . . The AIPA neglected, however, to 

eliminate a cross reference to section 145 in section 306 of 

Title 35 . . . .”). Amendments intended to clarify statutory 

language do not indicate that the original language

should be construed to mean the opposite of the clarifying 

language. See Jerman v. Carlisle, McNellie, Rini, Kramer 

& Ulrich LPA, 559 U.S. 573, 591 & n.12 (2010) (referencing statements in legislative history as evidence that 

amendment intended to clarify, rather than change, the 

scope of existing statutory provision). The 2011 amend-
14 IN RE: TELES AG INFORMATION

ments do not manifest Congress’ intent to preserve the 

availability of § 145 in the earlier version of the section. 

We therefore hold that the 1999 amendments eliminated the right of patent owners to secure review under 

§ 145, and affirm that the district court lacked jurisdiction 

over the § 145 action. 

III 

We turn next to Teles’ appeal of the Board’s rejection 

of claim 35.5 This claim was rejected on the ground that 

the claim would have been obvious. 

A. Claim Construction

Teles argues that the Board’s decision rests on an incorrect claim construction. During reexamination, the 

PTO must give claims their “broadest reasonable construction consistent with the specification.” In re ICON 

Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 

2007). We review de novo the Board’s claim construction 

to determine if it gives claims their broadest reasonable 

construction. Rambus v. Rea, 731 F.3d 1248, 1252 (Fed. 

Cir. 2013); see also In re Abbott Diabetes Care Inc., 696 

F.3d 1142, 1148 (Fed. Cir. 2012). 

Claim 35 depends on independent claim 34, which recites a “[s]witching apparatus for routing a telephone 

call . . . selectively by line switching or packet switching.” ’453 patent col. 14 ll. 48–53. Dependent claim 35

reads: 

35. The switch of claim 34,[6] further comprising means to produce the control signal for trans5 The Board also rejected claims 34, 36, and 38, but 

Teles does not challenge these rejections on appeal.

6 The full text of claim 34 reads:

 
IN RE: TELES AG INFORMATION 15

ferring to a line-switching transfer or a packetswitching transfer to the second end terminal, 

said control signal being produced automatically 

34. Switching apparatus for routing a telephone call comprising non-packetized data from a 

first end terminal located at a user’s premises to a 

second end terminal located at another user’s 

premises, selectively by line switching or packet 

switching, the switching apparatus comprising:

means for establishing a connection through a 

line-switching network to the second end terminal;

means for line-switching transferring data received from the first end terminal as nonpacketized data over the line-switching network to 

the second end terminal;

means for establishing a connection through a 

packet-switching network to the second end terminal;

means for packet-switching transferring data received from the first end terminal as nonpacketized data over the packet-switching network to the second end terminal; and 

means responsive to a control signal for transferring to a line-switching transfer or a packetswitching transfer to the second end terminal;

said means responsive to a control signal changing-over to a line switching data transfer or a 

packet-switching transfer during the existing 

transfer with the presence of said control signal.

’453 patent col. 14 l. 48 to col. 15 l. 4.

 
16 IN RE: TELES AG INFORMATION

when demands on the quality of the data transfer 

are understepped or exceeded.

’453 patent col. 15 ll. 5–10. 

Claim 35 pertains to the utilization of line switching 

and packet switching in routing telephone calls. Line 

switching and packet switching are two different types of 

telecommunications technologies. In line switching, “a 

connection is continually provided in real time with the 

complete bandwidth of a channel between two points” 

reserved for that connection. Id. col. 1 ll. 39–41. The fixed 

bandwidth allows for communications that are “free of 

any time delays,” but can be “expensive, particularly during telephone conversations since the costs accumulate irrespectively of the information actually 

transferred.” Id. col. 1 ll. 44–48. Packet switching operates “quite differently from line-switching exchanges, [in 

that] a fixed connection does not have to be maintained . . . i.e., each packet is treated individually and not 

in conjunction with others.” Id. col 1. ll. 33–34, 56–59. The 

Internet is an example of a network that uses packet 

switches (routers) to transfer data. Id. col. 1. ll. 60–67. 

Although packet-switching can provide connections cheaply, it can also produce significant time delays. Id. col. 2. 

ll. 3–7, 15–21. Claim 35 is directed to a device for switching from a packet-switched network to a line-switched 

network “automatically when demands on the quality of 

the data transfer are understepped or exceeded.” Id.

col. 15 ll. 5–10.

 The Board construed the claimed “means to produce 

the control signal” under § 112 ¶ 6 (now § 112(f)). Section 

112 ¶ 6 provides that functional claim language, like the 

“means to produce the control signal” element of claim 35, 

“shall be construed to cover the corresponding structure, 

material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The Board

defined the function as “produc[ing] the control signal for 
IN RE: TELES AG INFORMATION 17

transferring to a line-switching or a packet-switching 

transfer to the second end terminal.” J.A. 1435. The 

Board agreed with the examiner that, in order to release a 

control signal, the claim required monitoring factors 

related to demands of quality, but did not limit those 

factors to include only the bandwidth of a particular 

transfer. The Board explained that “by using the broad 

term ‘demands of quality,’ claim 35 is not limited to the 

‘bandwidth of a transfer,’” and that the time delay of a 

transmission was an example of a “quality factor.” J.A. 

1435. The Board found that the structure corresponding 

to the claimed means was the change-over device, identified in Figure 4 by label 711. 

While Teles’ argument is not entirely clear, it appears 

that Teles argues that the Board erred by not construing 

the function of claim 35 to be defined by the description of 

structure in the following portion of the specification:

Alter[n]atively, it can also be possible for the 

change-over control device 711 to monitor the 

bandwidth of a transfer and on understepping or 

exceeding a certain bandwidth and/or in the event 

of a time delay when forwarding IP data packets 

to automatically release a control command to 

change over to the relevant other type of transfer.

’453 patent col. 9 ll. 36–42. Teles contends that this passage requires that the function include monitoring the 

bandwidth of the packet-switched network in connection 

with the transfer. But the fact that the specification 

describes monitoring bandwidth as an alternative possibility for producing a change-over command does not 

support construing that function to match the alternative 

function disclosed in the specification rather than the 

recitation in the claim. 

When construing functional claims under § 112 ¶ 6, 

“[t]he statute does not permit limitation of a means-plusfunction claim by adopting a function different from that 
18 IN RE: TELES AG INFORMATION

explicitly recited in the claim.” Micro Chem., Inc. v. Great 

Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) 

(“[T]he district court erred . . . by incorporating unrecited 

functional limitations into the claims.”); see also Globetrotter Software, Inc. v. Elan Computer Grp., 236 F.3d 

1363, 1367 (Fed. Cir. 2001) (The structure disclosed in the 

specification must be necessary to perform “the function 

described in the claim.”) (citing Micro Chem., 194 F.3d at 

1258). Even if the passage in the specification relied on by 

Teles were relevant to construing the claim language, it 

does not support a different claim construction. The 

passage states that a control signal could be released 

automatically on “understepping or exceeding a certain 

bandwidth and/or in the event of a time delay when 

forwarding IP data packets.” ’453 patent col. 9 ll. 35–40. 

On its face, this language (using “and/or”) describes two 

factors—bandwidth and time delay—as potential alternatives for producing a change-over command; it does not 

suggest that bandwidth monitoring is necessary to perform that function. The Board did not err in its claim 

construction. 

Finally, Teles argues that the Board’s claim construction is erroneous in light of its alleged inventive concept 

as defined by the inventor (monitoring the bandwidth of a 

particular transfer). Teles argues that “the Supreme 

Court’s Mayo decision requires that the ‘inventive concepts’ embodied by the claimed invention be identified as 

part of construing claims.” Reply Br. 5 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 

1289, 1294 (2012)). But the Court in Mayo referred to an 

“inventive concept” only in the context of § 101 patenteligibility analysis, and specifically in the context of 

ensuring that a process “amounts to significantly more 

than a patent upon the natural law” which its steps 

invoke. Mayo, 132 S. Ct. at 1294. Requiring claims to 

recite an inventive concept does not mean that claims 

must be construed in light of unspecified inventive con-
IN RE: TELES AG INFORMATION 19

cepts. Mayo simply does not speak to claim construction. 

The inventive concept aspect of its discussion has no 

bearing on claim construction.

B. Obviousness

Obviousness is a question of law that we review de 

novo, but it rests upon factual determinations that we 

review for substantial evidence. In re Baxter Int’l, Inc., 

678 F.3d at 1361 (Fed. Cir. 2012) (citing In re Kotzab, 217 

F.3d 1365, 1369 (Fed. Cir. 2000)).

The Board upheld the examiner’s rejection of claim 35 

(as well as claims 34, 36 and 38) as obvious in view of 

White combined with either Jonas or Farese. White 

“relates to an Internet telephone service where calls can 

be made over the Internet from telephone to telephone, 

telephone to computer, or computer to telephone.” J.A.

1411 (citing ’890 patent col. 4 ll. 5–24). Farese relates to a 

technique for dynamically changing between packet and 

circuit switching in Integrated Services Digital Network 

(ISDN) communications. Jonas’ system and method 

“enables data packets to be transmitted over a bypass 

[line]-switched telephone network between two computers 

connected to a public packet-switched network, such as 

the Internet.” J.A. 1413 (citing ’792 patent col. 1 ll. 8–12). 

Jonas further discloses that the bypass network could be 

used to avoid time delays associated with packet switching. The Board affirmed the examiner’s finding that “‘it 

was well known in the art to change over to [] lineswitching or packet-switching during an existing transfer 

during a communication in response to a control signal,’

as disclosed by Farese and Jonas.” J.A. 1427.

Although White did not itself disclose changing between line-switched and packet-switched connections 

during an ongoing communication, the Board agreed with 

the examiner “that it would have been obvious to modify 

White to allow a change-over . . . during an existing 

transfer, as explicitly taught by Jonas and Farese.” J.A.
20 IN RE: TELES AG INFORMATION

1428. Moreover, this modification “would dynamically 

take advantage of both the inherent cost benefit of using 

the packet-switched Internet and the minimal time delay 

of [line]-switched telephone network.” J.A. 1428. According to the examiner, this benefit explained “why one of 

ordinary skill in the art would combine the teachings of 

White and Jonas and Farese.” J.A. 1429. With respect to 

claim 35, the Board agreed with the examiner that Jonas

disclosed changing to a line-switched network when

transmission delays are detected and thus “discloses 

‘producing a control signal automatically when the demands of quality are understepped or exceeded.’” J.A. 

1435.

Teles challenges the conclusion of obviousness on the

grounds that the prior art references do not disclose all of 

the recited limitations of claim 35. Teles’ main objection is 

to Jonas, specifically, that it discloses a method of calculating transmission delay based on monitoring the entire 

network rather than an individual communication. But 

this argument assumes an overly limiting construction of 

the prior art reference and the language of claim 35. 

Under the Board’s construction, the change-over control 

device of claim 35 must produce a signal automatically, 

which requires monitoring quality factors, such as delay,

but there is no reason to require monitoring the bandwidth of a single transfer in isolation from the network. 

Additionally, the Board found that Jonas teaches that 

transmission delay may be detected “using a variety of 

measures known to those skilled in the art, including 

topological delay time for the transmission, cost, or the 

number of gateways through which the network path 

traverses” as well as by “monitor[ing] the delay time . . . 

by sending occasional ‘ping’ messages to the destination 

router . . . and monitoring delay times of any response 

packets.” J.A. 14–17 (citing ’792 patent col. 5 l. 53 to col. 6 

l. 3). We find no reason to overturn the Board’s finding 

that Jonas discloses the limitation of claim 35. 
IN RE: TELES AG INFORMATION 21

Teles next argues a person of ordinary skill would not 

have found it obvious, or even possible, to combine White 

with Jonas. Teles asserts that incorporating Jonas’ “freestanding” switches into White’s switches, the central 

offices of local exchange carriers, would be “an extremely 

complicated process.” Reply Br. 25. The Board cited the

examiner’s reasons for rejecting Teles’ argument: “White 

is proposing providing a redesigned network [for] handling Internet based call[s] . . . [and] already anticipates 

redesigning the Central Office equipment to respond to 

Internet type calls, thus Jonas would clearly be envisioned in this network redesigned by White.” J.A. 1304. 

This finding directly contradicts Teles’ assertion that 

White on its own requires “no change of its switching 

apparatus,” Reply Br. 26, and instead shows that White 

presumes that modifications would be required. 

The Board did not err in rejecting claim 35 of the ’453 

patent as obvious in view of White and Jonas.

AFFIRMED