For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes review and determines if claims of a patent are unpatentable. Can the PTAB cancel claims based on indefiniteness during an IPR? The answer is NO!
In federal court, the validity of a U.S. patent may be challenged on the basis of failure to comply with any requirement of 35 U.S.C. § 112, which includes indefiniteness in the claims. In 1980, the U.S. Congress established “reexamination” of a U.S. patent as to patentability of claims based on certain prior art typically known as “ex parte reexamination”. Subsequently, the U.S. Congress established “inter parties reexamination” that gave third parties the opportunity to participate in the reexamination process based on certain prior art. Continue Reading