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