Inter Partes Review And Indefinite Claims (Excerpt from Law360)
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Inter Partes Review And Indefinite Claims
Law360, New York (April 06, 2015, 10:49 AM ET) --
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| Amy Foust |
On March 3, 2015, the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office issued a decision denying institution of inter partes review in IPR2014-01378.[1] The decision is interesting in part because relatively few IPR petitions have been denied. The decision is interesting for another reason, as well. It is a PTAB adjudication of indefiniteness under 35 U.S.C. § 112.
IPRs are not supposed to address indefiniteness. By statute, “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”[2] By rule, however, a petitioner requesting IPR must propose how the challenged claim(s) should be construed.[3] PTAB panels routinely address claim construction before considering any alleged basis for invalidity under 35 U.S.C. § 102 or 103.[4] Three PTAB panels, with no overlapping administrative patent judges between the panels, have now denied or terminated IPR proceedings on the ground that the claims could not be construed because they were indefinite.
IPRs are not supposed to address indefiniteness. By statute, “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”[2] By rule, however, a petitioner requesting IPR must propose how the challenged claim(s) should be construed.[3] PTAB panels routinely address claim construction before considering any alleged basis for invalidity under 35 U.S.C. § 102 or 103.[4] Three PTAB panels, with no overlapping administrative patent judges between the panels, have now denied or terminated IPR proceedings on the ground that the claims could not be construed because they were indefinite.
The downside to challenging a patent claim that might be invalid under § 112 is that the PTAB cannot — in an IPR — cancel claims that are indefinite, but a finding of indefiniteness may preclude the PTAB from considering cancelation of the claims based on anticipation or obviousness. As such, indefinite claims may survive an IPR even if the petitioner has identified strong bases for invalidity under §§ 102 and 103. The return on the petitioner’s investment in the IPR may be diminished if the patent owner lacks the sophistication to appreciate or willingness to acknowledge that “winning” denial of an IPR petition on this basis will not typically increase confidence in the validity of the patent.
For patent owners, this is one more trap for the unwary. Claims challenged in a petition for IPR should be assessed for indefiniteness. This is true even if the petition does not address indefiniteness, because the petition should not address indefiniteness. If there is a concern about whether challenged claims will withstand scrutiny under 35 U.S.C. § 112, a patent owner might dedicate precious space in a preliminary response to arguing claim construction. Ironically, the purpose of that argument would be to avoid the denial of the IPR petition on the ground that the differences between the claims and the prior art cannot be ascertained because the claims are indefinite. If a dispute is foreseeable, a reissue application may be desirable to clarify the claims before they are asserted or challenged.
The adoption of indefiniteness as a ground for denying or terminating an IPR by three unique panels of the PTAB makes this seem like a more plausible outcome in future trials. Although an IPR is limited by statute to consideration of issues arising under 35 U.S.C. § 102 and 103, parties to an IPR should nonetheless consider the possible effect of indefiniteness concerns.
—By Amy M. Foust, Shook Hardy & Bacon LLP
For patent owners, this is one more trap for the unwary. Claims challenged in a petition for IPR should be assessed for indefiniteness. This is true even if the petition does not address indefiniteness, because the petition should not address indefiniteness. If there is a concern about whether challenged claims will withstand scrutiny under 35 U.S.C. § 112, a patent owner might dedicate precious space in a preliminary response to arguing claim construction. Ironically, the purpose of that argument would be to avoid the denial of the IPR petition on the ground that the differences between the claims and the prior art cannot be ascertained because the claims are indefinite. If a dispute is foreseeable, a reissue application may be desirable to clarify the claims before they are asserted or challenged.
The adoption of indefiniteness as a ground for denying or terminating an IPR by three unique panels of the PTAB makes this seem like a more plausible outcome in future trials. Although an IPR is limited by statute to consideration of issues arising under 35 U.S.C. § 102 and 103, parties to an IPR should nonetheless consider the possible effect of indefiniteness concerns.
—By Amy M. Foust, Shook Hardy & Bacon LLP
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