Indefinite claims on the PTAB Birch, Stewart, Kolasch & Birch

Inter partes review (IPR) is a trial proceeding conducted by way of the Patent Trial and enchantment Board (PTAB) of the U.S. Patent and Trademark office (USPTO). IPRs took effect with the the usa Invents Act in 2012.

In an IPR, a petitioner can problem claims most effective below 35 USC §102 or §103. this is a narrower latitude of grounds than will also be raised in assessment with a petition for publish-grant assessment of a patent, during which a petitioner can problem the claims below 35 USC §a hundred and one, §112(a)-(f), §102 or §103.

throughout an IPR, the PTAB need to construe the claims as part of its analysis to assess no matter if to institute an IPR beneath the Phillips general of declare interpretation (Praxair v ATMI 543 F.3d 1306, 1319 [Fed. Cir. 2008]).

selecting whether the claims are definite is a component of this analysis to examine the scope of the claims at subject (Blackberry v MobileMedia ideas, No. IPR2013-00036, Paper sixty five at 7 [March 7, 2014]). A declare need to notably element out and extraordinarily declare the invention ("guide of Patent examining manner" [MPEP] §2173). This requirement provides adequate note to the general public about what the boundaries of the patented invention cowl.

the USA Supreme court established the precedent in SAS Institute v Iancu that if the PTAB finds an affordable chance that the petitioner would be successful with admire to at the least one claim in its petition for instituting an IPR, then the PTAB must institute the IPR on all of the claims challenged in the petition. ahead of the SAS determination, the PTAB had the capacity to institute an IPR on only the claims that the PTAB determined met the ordinary of "an affordable probability that the petitioner would be triumphant" (35 USC §314[a]).

The SAS determination performed a big function in Samsung Electronics america v Prisua Engineering, a precedential opinion issued via the court of Appeals of the Federal Circuit (948 F.3d 1342, 1350 [Fed. Cir. 2020]). Prisua filed suit towards Samsung alleging that Samsung had infringed US patent number 8,650,591 owned by means of Prisua, which covered video-enabled digital gadgets for embedding user information in interactive functions. Samsung consequently filed a petition for IPR in opposition t Prisua difficult claims 1 to four, 8 and 11 of the '591 patent as being obtrusive below four separate grounds.

The PTAB originally instituted the IPR on claim 11, which become the best declare that the PTAB found met the ordinary of an affordable likelihood that the petitioner would be successful. youngsters, after the resolution in SAS, the PTAB modified the normal institution choice to institute on all the challenged claims.

within the ultimate written resolution (IPR2017-01188, Paper 72 [October 2, 2018]), the PTAB discovered most effective declare 11 to be unpatentable for obviousness, and sua sponte concluded that claims 1 to four and 8 have been indefinite, and therefore, the PTAB couldn't follow the prior artwork to claims 1 to four and 8.

The PTAB sua sponte found that declare 1 of the '591 patent was indefinite because it recites an apparatus in the preamble, and features of the equipment are claimed the usage of lively phrases of a method. as an instance, claim 1 recite the elements "pointed out equipment comprising: a picture catch equipment capturing the user enter video records flow; a picture screen machine displaying the fashioned video stream".

in addition, the PTAB found that the feature "digital processing unit" in the phrase "wherein talked about information entry device is selected from a gaggle of contraptions inclusive of: a keyboard, a reveal, a instant verbal exchange capability device, and an external reminiscence machine; a digital processing unit operably coupled with the data entry device, pointed out digital processing unit performing …" invokes 35 USC §112, sixth paragraph as being "skill plus characteristic" language.

appeal procedure

On attraction to the Federal Circuit, Samsung took potential of the PTAB's interpretation that claims 1 to 4 and 8 are indefinite and argued that the PTAB erred in no longer cancelling claims 1 to 4 and eight upon opting for they are indefinite. The Federal Circuit held that the PTAB did not err in now not cancelling the claims since the PTAB does not have statutory authority to cancel claims as being indefinite in an IPR. The Federal Circuit emphasised that the petitioner may additionally request that claims be cancelled as being unpatentable simplest under 35 USC §102 or §103, since these are the only grounds that can be raised in an IPR.

Samsung additionally argued, within the choice, that the PTAB erred with the aid of not making use of the prior artwork to claims 1 to four and 8. The PTAB held that the prior paintings could not be utilized to the claims since the PTAB identified several cases in the claims that raised indefiniteness considerations.

The Federal Circuit analysed the PTAB's finding that the claims are indefinite. The Federal Circuit held that the phrase "digital processing unit" didn't invoke interpretation below 35 USC §112, sixth paragraph since the phrase does not use the triggering "skill for" language, the identical phrase is recited in claim 11 and became no longer found to invoke §112, sixth paragraph, and the standard context of the claim gives satisfactory structure to the phrase "digital processing unit".

"The SAS determination performed a significant position in Samsung Electronics the usa v Prisua Engineering, a precedential opinion issued through the court docket of Appeals of the Federal Circuit."

The Federal Circuit additionally analysed the PTAB's discovering that claims 1 to four and 8 are indefinite because claim 1 recites an equipment in the preamble, but the aspects of the equipment are claimed the use of lively phrases of a technique. The PTAB pointed to precedent based in IPXL Holdings v Amazon.com that this class of claim structure renders the claims indefinite for opting for when infringement happens (430 F.3d 1377, 1384 [Fed. Cir. 2005]).

hence, the PTAB concluded that it couldn't practice the prior paintings to claims that are indefinite. referring to case legislations that held claims invalid for both indefiniteness and obviousness, the Federal Circuit held that the PTAB should still have accomplished analysis of the claims even with whether the claims were interpreted as an equipment or a technique and remanded the case to the PTAB to follow the prior art to claims 1 to 4 and eight.

whereas this case become correctly determined in keeping with the statutory authority granted to the PTAB, it highlights the likely unintended influence that a patent that has, arguably, indefinite claims is still legitimate and enforceable. despite the fact, on remand, it's possible that the claims might be held invalid as soon as the PTAB applies the prior art to the claims.

alternative routes

in an effort to have the claims invalidated as being indefinite, Samsung may have pursued an option forum. as an example, Samsung could have filed a petition for ex parte re-examination (35 USC §302-307; MPEP §2209). Ex parte re-examination requires a "vast new query of patentability", which is a more robust usual for the petitioner to fulfill than in an IPR continuing.

moreover, the petitioner in an ex parte re-examination performs no role within the the rest of the proceeding. hence, it's a less attractive choice to pursue invalidation of a patent. besides the fact that children, in an ex parte re-examination, the petitioner can remain anonymous, if it chooses. This may have a improvement to the petitioner in some situations.

Samsung additionally may have raised the difficulty of indefiniteness all over the concurrent district court litigation as a defence that the patent is invalid. Samsung couldn't have filed a petition for submit-supply overview since the '591 patent became issued before the the usa Invents Act took effect. submit-grant review does enable a petitioner to problem a patent on indefiniteness considerations, but the petition should be filed within 9 months after the patent issues (35 USC §321[c]).

In conclusion, the PTAB can't exceed its statutorily granted authority by using sua sponte picking out that the challenged claims are indefinite. impartial of the indefiniteness of the claims, the PTAB have to observe the prior paintings to the claims. Petitioners that try and take knowledge of a situation wherein the PTAB raises an indefiniteness problem to the claims will probably fail in searching for to have the claims cancelled.

If there's any possibility that the claims could be interpreted as being indefinite, the petitioner can be more suitable appropriate looking for an option forum to problem the claims as being indefinite.

Hailey R Bureau is a registered patent agent at Birch, Stewart, Kolasch & Birch. She will also be contacted at: hailey.r.bureau@bskb.com

Chad M Rink is a accomplice at Birch, Stewart, Kolasch & Birch. He can also be contacted at: chad.m.rink@bskb.com

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