PTAB Should Not Disapprove Claims on the Grounds of Indefiniteness in IPR

Dec 2022

Federal Circuit has disapproved of arguments of claims that show any reason other than anticipation pertaining to party procedures. Federal Circuit has rejected the challenge shown by Samsung Electronics America, Inc. The company challenged that PTAB can disapprove claims that are considered indefinite in IPR.

Samsung has been charged on the grounds of infringing U.S. Patent for which it has filled IPR petition against claims 1 to 4, including 11 of 591 patents. The IPR initially was formed to deal with only claim 11 and it should not include any challenging claims of 1-4, 8. Due to this, the IPR was pending and therefore, the Supreme Court decided to include challenged claims from all grounds that are included in the petition. In this regard, the board has asked the parties to furnish supporting evidence for the new claims and grounds added.

Pertaining to the claim produced by Samsung, it requested the Board to cancel the claims 1-4, 8 for the absence of solid ground. As a result of this, the Board said that claim 11 could not be patented considering a published patent application. But it was firm about its conclusion of considering claims 1-4, 8 as indefinite. Due to this, Samsung along with Prisua opted for cross-appeal of the decision made by the Board.

Concerning this situation, Samsung has shown in regard to provisions in IPR statute that Congress has given the right to the Board to deny claims made on the grounds of indefiniteness. The court recognized that the Board should review the newly included claims as given under section 112. Though, the court has rejected Samsung’s appeal that states IPR statues enable the Board to cancel claims due to indefiniteness. The court further added that the indefiniteness might have some effects. Also, the court mentioned that if the Board is unable the right scope of the claim, it can decline to IPR for the same. Due to this dilemma, it is challenging to come up with a suitable solution with respect to the fact whether the petitioner had opted for establishing an unpatented claim under sections 102 to 103.

In response to Samsung’s argument, the court said that the Board should not have regarded the claim as ‘means-plus-function’ and concluding it on grounds of obviousness and anticipation. Adding to this, the court explained that even if claims 1-4, 8 raise questions of indefiniteness, the Board should have further examined the grounds of anticipation and obviousness.

Further, the court said that though the decision is linked to indefiniteness, it does not impact claims that are considered indefinite on other grounds. Also, the court supported the Board’s conclusion that claim 11 cannot be patented correct. So, the court wants the Board not to reject any claim on the grounds that are not available in the IPR institute. Instead the board should opt for a better analysis of the grounds before rejecting it.

Trending Blogs

Fluid Trademarks

Fluid mark is often thought of as a conventional mark which can be converted to a living form with some specific representation. In other words, fluid trademark is a modern method of branding that shall help achieve success easily in this digital era. As per the name, the mark tends to change with time. This […]

Protection Folklores India Intellectual Property Rights

India is a land of diversity when it comes to folk and ethnic culture with hundreds of ethnic, linguistic and religious groups with diverse origins and lifestyles that, over time, intermingled in part and remained untouched in parts over centuries. Perception about folklore differs in India, mainly associated with tribals and simple rural people, rather […]

Protection Folklores India Intellectual Property Rights

An Overview of Copyright

WIPO defines copyright as the right of creators to ownership of their creations and to make use for commercial or other purposes. Copyright today covers literary creations, printed material, computer programs, data, audiovisual media, dance, paintings and drawings, photographs, sculpture, architecture, ad material, technical drawings and others that are the outcome of intellectual effort. From […]

Need for Kashmiri Saffron to get the GI tag

The Kashmiri Saffron has been given geographical indication tag recently from Lieutenant Governor G C Murmu. The acquiring of GI tag is a step ahead in bringing the brand among the list of top ones. The tag has been given for the saffron grown in Kashmir. In this regard, it can be said that the […]

The Clash Of Jurisdiction Of CCI And TRAI

Overlapping Jurisdiction The Competition Act, 2002 read with section 18 of the legislation delegates to the Competition Commission of India (the “CCI”) the duty of “promoting and sustaining competition” in the Indian economy. This implies that the CCI will have principal jurisdiction to regulate conditions of competition in the relevant market of India. Whereas, Section […]

India dropped to 40th position in International Intellectual Property Index

India has fallen to 40th position in the International Intellectual Property Index. This index helps know about the IP climate in the 53 global economies of the present year. This is as per the report US Chamber of Commerce’s Global Innovation Policy Center. As per last year’s report, India has been ranked in the 36th […]

Well Known Trademark And Indian Law

What is well-known trademark? As per new Trade Mark Rules 2017, a new procedure has been created that allows the Registrar to proclaim a particular trademark as “well known”. Section 2(1)(zg) Of The Trademark Act, 1999 states that well- known trademark is a mark which has become well known to the section of the public […]

Artificial Intelligence and Intellectual Property Law

What is Artificial Intelligence? The division of Science which deals with making machines equipped with human-like intelligence to act in human-like fashion and the exhibit human capabilities is known as Artificial Intelligence (AI). Multiple disciplines like Computer Science, Psychology, Philosophy, Sociology, Mathematics, Biology and Neuron Science contribute to the development of AI. Benefits Of AI […]

US and India to join hands on the grounds of Intellectual Property Rights

After US President Donald Trump’s visit in India from February 24 to 25th February, India and the US have opted for an agreement relating to intellectual property rights or IPR. As a result of this, the cabinet sanctioned MoU with the US pertaining to IPRs, relevant to information and broadcasting as has been stated by […]