PTAB May Not Cancel Indefinite Claims in IPR, No Matter What
The US Court of Appeals for the Federal Circuit imposed limits on the Patent Trial and Appeal Board’s (PTAB’s) is authorized to do by statute when dealing with challenged claims in an inter partes review (IPR) that it finds to be too indefinite to apply prior art.. Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., Case Nos. 19-1169, -1260 (Fed. Cir. Feb. 4, 2020) (Bryson, J).
Prisua Engineering owns a patent on a video-editing technique and related apparatus. Samsung Electronics America petitioned for IPR of several claims, asserting anticipation and obviousness grounds. The PTAB instituted on only one of the challenged claims but declined to institute as to the remainder of the challenged claims, finding they were indefinite for application of prior art and therefore Samsung could not establish a reasonable likelihood of prevailing on anticipation or obviousness. Pursuant to the Supreme Court’s decision in SAS Institute (IP Update, Vol. 21, No. 5), the PTAB later modified its institution to include all of the challenged claims and grounds presented in the petition. In its final written decision, the PTAB found the originally instituted claim invalid for obviousness but held that Samsung had not established anticipation or obviousness of the remaining claims. The PTAB repeated its determination that the remaining claims were indefinite both under IPXL (IP Update, Vol. 8, No. 12) and because claim term “digital processing unit” was a means-plus-function claim without corresponding disclosed structure. Both parties appealed.
The Federal Circuit affirmed the obviousness determination as to the one claim, finding that the PTAB’s conclusion was supported by substantial evidence. However, the Court reversed and remanded as to the remaining claims. The Court explained that the Supreme Court’s statement in Cuozzo Speed Techs. (IP Update, Vol. 19, No. 7) that the US Patent and Trademark Office would be acting “outside its statutory limits” by “canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review” prevented the PTAB, in an IPR, from declaring a claim to be indefinite. The Court cited its 2019 ruling in Neptune Generics v. Eli Lilly & Co. for the proposition that “Congress expressly limited the scope of inter partes review to a subset of grounds that can be raised under 35 U.S.C. §§ 102 & 103.” As the Court explained, the PTAB cannot institute an IPR based on an indefiniteness challenge and is similarly precluded from cancelling claims as indefinite on its own accord
The Federal Circuit also reversed the PTAB’s finding that the claim term “digital processing unit” was indefinite. The Court disagreed with the PTAB and found that the claim was not a means-plus-function claim lacking corresponding structure in the written description. In its analysis, the Court applied the rebuttable presumption against treating a claim term as means-plus-function when the words “means for” are not recited. Here, the Court found that the claim term “digital processing unit” was not purely functional but was simply another name for a general purpose computer. Based on that claim construction ruling, the Court remanded the case to the PTAB to determine whether the claims were anticipated or obvious.
Practice Note: A broad range of grounds (including indefiniteness under § 112) may be raised in a post-grant review (PGR) petition, but such petitions may only be presented for a limited time after the patent is issued. 35 USC § 321(c). The Federal Circuit also has recognized the PTAB’s authority to make other § 112-related findings (such as written description and enablement) in IPRs if they are necessary to adjudicating derivation, anticipation or obviousness. In derivation proceedings, the PTAB is authorized to evaluate issues of priority and patentability, often involving issues arising under § 112. In determining whether a reference constitutes prior art against a patent owner’s priority assertion, the PTAB will routinely evaluate whether there is § 112 support in a priority application.