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.

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