CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature. Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule. To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is precluded from officially making such an indefiniteness determination. Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes.

In Intel Corporation v. Alacritech, Inc., (here) the Federal Circuit reiterated that the Board cannot enter a formal indefiniteness determination for original patent claims (not so for amended claims)

In Intel, Petitioners challenged claims as obvious, but argued on appeal that the lack of specification structure should require the PTAB to find the claims indefinite for failing to disclose sufficient structure under 35 U.S.C. § 112(6). In its Final Written Decision, while a majority of the PTAB panel seemingly agreed regarding indefiniteness, it declined to formally invalidate the claims as indefinite because the Board in an IPR “do[es] not consider issues of validity under 35 U.S.C. § 112.” Instead, as is usually done, the Board held that Petitioners failed to propose a construction identifying the structure for the claimed function and therefore failed to prove that the claims are unpatentable as obvious (even though the failure in the proposed construction was due to the lack of necessary detail in the patent itself).

Petitioners argued on appeal that the Board should have held the claims unpatentable as indefinite because § 318 requires the Board to issue a written decision addressing the patentability of the claims, “even if for reasons outside the statutory grounds of institution.” Predictably, the CAFC rejected this argument, explaining:

" [Section 318(a)] does not grant the Board authority to act outside its statutory limits by holding a patent claim unpatentable as indefinite under § 112. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2132, 2141–42 (2016). Nor does the Supreme Court’s decision in SAS grant the Board such authority. See SAS Ins., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018) (“Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.”). Accordingly, we hold the Board properly determined that it lacked legal authority to hold the claims unpatentable as indefinite.

While this decision is consistent with earlier determinations, it highlights a glaring shortcoming in the IPR statutes. To be sure, it may not make sense to accept 112 grounds in a IPR petition in a general sense. But, leaving defective claims to the public where otherwise viable 102 and 103 grounds are presented in an IPR — because the Board has no power to review defective claims as written— is an aspect of the IPR statutes that should be cured via technical amendment.

I wont hold my breath 😉

Scott A. McKeown is an author of the Patents Post Grant