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

Lack of Music Publishing Knowledge Robbing Indian Artists of their Rights

In India there has been a lack of knowledge regarding publishing music. It can be said that a large part of publishing an art for is still unexplored. It is not about the common people but the artists and the music companies are oblivious towards it. At the initial stage due to lack of knowledge […]

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 […]

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 […]

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 […]

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 […]

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 […]

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 […]

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 of Acronyms under Trademark Law

It is known that acronyms are the first letters of a long phrase of words combined together. On the other hand, trademark is about a mark that shall help distinguish the product or service of goods or service from the rest of the items. Therefore, it can be said that an acronym can be registered […]

Intellectual Property Rights in the Era of Counterfeit Goods

The industry of counterfeited products has taken shape due to the desire of customers to get hands-on high quality item at reasonable rates. They have great satisfaction in this and this is where the counterfeited goods are made available in the market. Different world markets are full of counterfeited products ranging from cosmetics, electronics, footwear, […]