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

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 […]

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 […]

The Common Law Protection Of Trade Secrets And The Need For A Statue

Introduction: A trade secret is anything you use in your business that gives you an advantage over your competitors. A trade secret can be a recipe, process, formula, strategy, technique or device that your competitors do not know, do not have, and cannot use. With development in technology, as well as the ease of sharing, […]

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 […]

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 […]

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 […]

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 […]

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 […]

Music Law 101: What Does Copyright Law Protect?

Music Law 101 is all about protecting different musical works along with sound recordings to its original creator. As copyright can be a confusing part, it is better to know what all it protects so that it becomes easy. It is known that each piece of recording has two types of copyrights. First, it protects […]