Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?
CAFC Implies PTO Might Overlook Some 112 Issues
The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review. This is because the IPR statutes only authorize trial grounds based on patents and printed publications. The same has been true of patent reexamination for decades.
Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial. The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds.
" Congress viewed a challenge based on indefiniteness to be distinct from a challenge based on sections 102 and 103. As such, 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.
This is essentially how the Board operates today. Prior to SAS, claims with 112 issues, most typically claims with unsupported means-plus-function (112(f)) structure, would be excluded from trial. Post-SAS, if such claims are in the minority, the trial proceeds only on the prior art grounds. But in the Samsung decision, the Court suggested the PTAB might consider certain types of claims, explaining:
" On remand, the Board should address Samsung’s argument that the Board may analyze the patentability of a claim even if that claim is indefinite under the reasoning of IPXL. The rationale of IPXL is that the claim conflates elements of both an apparatus and a method, rendering the claim indefinite for purposes of determining when infringement occurs. . . . [¶] Even though the validity of the challenged claims may be subject to question for IPXL-type indefiniteness, that is simply another ground on which the claims might be challenged in an appropriate forum (other than the Board). It does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds.
That is, for claims deemed indefinite for mixing method and apparatus statutory classes, the confusion is more on the infringement side. So, assuming a trial ground demonstrates the system in a distributed or stand-alone form, perhaps the 112 debate is only academic.
Given means-plus-function deficiencies under 35 U.S.C. § 112(f) are more common before the PTAB, this argument may find applicability there as well. (Note: MPF claims in the dispute above were found supported on appeal so the issue was not reached). In the case of deficient MPF claims the claimed function (method in IPXL context) is not the issue, it is the underlying structure (apparatus) that is in question as unsupported. Given the expertise of the agency in identifying such support, a truly unsupported 112(f) claim is just functional claiming. Why send that defective claim away from the expert agency if the prior art meets the same generally disclosed function of the specification?