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.
The Leahy-Smith America Invents Act (“AIA”) replaced inter parties reexamination with “inter parties review” otherwise known as an IPR. The AIA allows a petition for an IPR “only on a ground that could be raised under section 102 or 103 [of the Patent Act] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The IPR can be requested at any time during the enforceability period of a U.S. patent.
The AIA also established “post -grant review” for a limited time after issuance of a U.S. patent to cancel patent claims based “on any ground that could be raised under paragraph (2) or (3) of section 282(b) [of the Patent Act] (relating to invalidity of the patent or any claim).” 35 U.S.C. § 321(b). In a post-grant review, 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 the recent case of Samsung Electronics America, Inc. v. Prisusa Engineering Corp., No. 2019-1169 and 2019-1260 (C.A.F.C. 2019), Samsung Electronics America, Inc. (“Samsung”) filed an IPR challenging certain claims of U.S. Patent No. 8,650,591 (“the ‘591 patent’), owned by Prisusa Engineering Corp. (“Prisusa”), as unpatentable. At the end of the IPR, the PTAB declined to analyze whether claims 1-4 and 8 of the ‘591 patent were unpatentable as being anticipated or obvious because it concluded that those claims were indefinite. In the decision of the PTAB, the Board found that claims 1-4 and 8 were indefinite under this court’s decision in IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). The Board also found that claim 1 and dependent claims 2-4 and 8 of the ‘591 patent invoked section 112, sixth paragraph, for the “digital processing unit” limitation because the specification of the ‘591 patent failed to identify any corresponding structure, as required by section 112. However, the Board decided not to cancel these claims. On appeal, Samsung contends that the PTAB should have cancelled claims 1-4 and 8 of the ‘591 patent as indefinite.
On appeal, the court held that the Board may not cancel claims for indefiniteness during an IPR. The court found that 35 U.S.C. § 318(a) entitled “Scope,” states that “[a] petitioner in an inter parties review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The court also found that Samsung was not permitted to request that the Board cancel claims 1–4 and 8 of the ‘591 patent on the ground that they were indefinite and the Board could not cancel those claims as indefinite on its own accord. The court concluded that Congress viewed a challenge based on indefiniteness to be distinct from a challenge based on sections 102 and 103. As such, the court stated that the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or 103.
Should the court have found that the Board could invalidate claims based on indefiniteness? In the Samsung case, the court found that it would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR. The court did find that post-grant review allowed a petitioner to challenge patent claims based on indefiniteness but not in an IPR because the statute did not provide for such basis. It appears that the court would leave this up to Congress to address. However, the court did find that although the Board may not cancel claims based on indefiniteness, it does not preclude the Board from addressing the patentability of claims based on section 102 and 103 grounds. The court remanded the case back to the Board to determine whether claims 1-4 and 8 of the ‘591 patent are unpatentable as anticipated or obvious based on the instituted grounds for the IPR.
Should the court have remanded the case back to the Board for a decision on the merits? While the court remanded the case back to the Board for a decision, will the Board be able to interpret the claims to be definite for the purposes of addressing the patentability of claims on section 102 and 103? If not, should the Board have not instituted the IPR based on these claims? Since the court decided to remand the case back to the Board, the Board may find that the claims are definite enough to determine the patentability based on section 102 and 103. Otherwise, the Board will withdraw or decline the institution of review of these claims for the IPR. If that occurs, the validity of the claims as to indefiniteness will have to be challenged in federal court.
In summary, the court has held that the PTAB cannot cancel claims based on indefiniteness under 35 U.S.C. § 112 during an IPR. However, the PTAB can determine the validity of claims based on indefiniteness during post-grant review. During an IPR, the PTAB can only determine the patentability of claims based on section 102 and 103. Therefore, if the claims are definite enough to determine the patentability based on section 102 and 103, the PTAB may cancel claims during an IPR or, if not, decline the institution of review of these claims for the IPR.