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

Can Religious Symbols Be Registered As Trademarks?

Are you planning to register religious symbols as trademarks? Well, you should research thoroughly to understand the use of religious symbols as trademarks. You have to consider the sentiments of people before you plan to use regions symbol for your business. India being a secular country encourages different citizen follows different religions, practicing it and […]

3D Printing and IPR

The three-dimensional or 3D printing service is different from the traditional way of manufacturing. In the 3D process, objects are created layer wise to get the desired three dimensional impacts. Since the inception of this latest idea in 1980s, it has gone through several changes in the technology used. This requires use of different production […]

Why Intellectual Property Rights

Intellectual property rights create a situation in which the inventor or the creator enjoys full ownership and rights to commercial exploitation of his creation while everyone else is excluded. The justification is that such a creation, if it has material value, must benefit the creator while preventing others who would otherwise commercially exploit the concept […]

The Big Push to Reform Music Copyright for the Digital Age

Music creators of the present digital age should be aware of the copyright issues better due to different reasons. Music is made available on different websites, and it is necessary to prevent the increasing problem of infringement. Pertaining to this, a number of bills are proposed in Congress that can enhance royalty payment for the […]

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 […]

Pharma Companies File 15% of Patents in India

The Indian Pharma industry is primarily known for its Generic Drugs. But recently, to push its value higher in the market, the Indian pharmaceutical industry is investing more in research and development of new drugs along with increasing the potency of the existing ones to move up the value chain. From 2013-2015, out of the […]

Trademarking surnames

Having difficult surnames may be challenging to explain others and also when you want to register the name as trademark. As per the trademark and merchandise act of 1958, it is stated that a mark can be refused if one choose a personal name or surname. Though, there is no such clear specification in the […]

Voluntary Cancellation of Trademark Registration

Trademark registration is a timely affair for 10 years, and it is registered as per the Trademark Act, 1999. There are certain rules and laws pertaining to trademarking a symbol for a brand. A proprietor can get a symbol, phrase of the word, or equivalent trademarked to be used for the brand. But there are […]

Intellectual Property Glance

The discussion on intellectual property starts with distributing it into three categories for the same of convenience and clarity. The product of intellectual efforts: The product of intellectual effort could be tangible or intangible encompassing such outcomes as literary creations, artistic creations, books, music, song, dance, drama, sculpture, paintings and even computer programs. It must […]

Liability Of Internet Service Providers In Digital Environment

Isp Liability In India: Internet Service Providers (ISPs) can be liable for the content on the sites they host. They can be liable even if they were merely passively hosting the site, unless they take down the objectionable material when they receive notice of it. The Copyright Act and the Information Technology Act includes the […]