Search for Term

Indefinitely Not: Federal Circuit Rules that the PTAB Cannot Cancel Claims for Indefiniteness During an IPR

Posted by

Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal Nos. 2019-1169, 2019-1260 (Fed. Cir. Feb. 4, 2020)

The Federal Circuit has held that the Patent Trial and Appeal Board may not cancel claims as indefinite in an IPR proceeding.

In 2016, Prisua Engineering Corp. sued Samsung Electronics America, Inc. and other Samsung entities for infringement of U.S. Patent No. 8,650,591 (“Video Enabled Digital Devices for Embedding User Data in Interactive Applications”). Samsung then petitioned the PTAB for inter partes review of the ‘591 patent, asserting that claims 1–4, 8, and 11—which are directed to methods and apparatuses for “generating a displayable edited video data stream from an original video data stream”—were unpatentable.

The Board ultimately held that claim 11 was unpatentable based on obviousness. However, the Board declined to analyze whether claims 1–4 and 8 were unpatentable as anticipated or obvious, because it concluded that those claims were indefinite.

An IPR petition can request cancellation of claims “only on a ground that could be raised under section 102 or 103 [of the Patent Act] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The statutory provisions governing IPRs do not permit the Board to institute review of claims for indefiniteness. In Cuozzo Speed Techs., LLC v. Lee, the U.S. Supreme Court stated that the PTO would be acting “outside its statutory limits” by “canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review.” 136 S. Ct. 2131, 2141-42 (2016); see also Neptune Generics, LLC v. Eli Lilly & Co., 921 F.3d 1372, 1378 (Fed. Cir. 2019) ( “Congress expressly limited the scope of [IPRs] to a subset of grounds that can be raised under 35 U.S.C. §§ 102 & 103.”).

Samsung appealed the Board’s decision to the Federal Circuit, arguing, inter alia, that the Board should have canceled claims 1–4 and 8 for indefiniteness. Samsung argued that even though the Board may not institute an IPR based on a claim’s indefiniteness, it may cancel such a claim on indefiniteness grounds after it has instituted review on statutorily authorized grounds. In support, Samsung pointed to various provisions in the IPR statute—for example, 35 U.S.C. § 318(a)’s supposedly broad direction to the Board to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”

The Federal Circuit panel of Judges Prost, Newman, and Bryson rejected these arguments, finding Samsung’s position “that there is no limit to the Board’s authority to make unpatentability determinations at the conclusion of an IPR proceeding” to be “at odds with both the statutory language and the case law.” The court, citing the language of the IPR statute and precedent from the Supreme Court and its own earlier decisions, explained that the Board may not institute an IPR of claims for indefiniteness. Nor can the Board cancel claims as indefinite on its own, as the challenger’s petition defines the scope of the IPR proceeding, and the Board may not expand that scope in its final written decision and cancel claims on an unavailable ground (e.g., indefiniteness). Further, the language of the IPR statute establishes that Congress viewed unpatentability challenges based on §§ 102 and 103 to be distinct from challenges based on indefiniteness.

Thus, according to the Federal Circuit, “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or 103.”

Implications for Patent Law Litigation

The Federal Circuit’s holding definitively limits the potential scope of a petitioner’s IPR challenge.  Given the historically high invalidation rate of IPR petitions and the use of IPR challenges as a strategic tool by accused infringers, this case is a win for patent owners.