PTAB May Not Cancel Claims on the Grounds of Indefiniteness in an IPR Proceeding

| Serah Friedman, Ph.D.


Before Prost, Newman, and Bryson. Appeal from the Patent Trial and Appeal Board.

Summary: The Patent Trial and Appeal Board (“PTAB”) may not cancel claims on the grounds of indefiniteness in an IPR proceeding.

Samsung petitioned for inter partes review (IPR) of a patent owned by Prisua directed to generating an edited video data stream through video image substitution. The PTAB initially determined that it would only review one of the claims for obviousness. However, the PTAB concluded that the claim was indefinite. Because the PTAB was unable to construe the claim, it concluded that Samsung had not established a reasonable likelihood of prevailing in showing the claim unpatentable. As the IPR was close to concluding, the Supreme Court issued its opinion in SAS. The PTAB modified its institution decision to include all challenged claims and all grounds in the petition. The PTAB allowed the parties to file supplemental briefing. In its supplemental briefing, Samsung urged the PTAB to cancel the claims on the grounds of indefiniteness. In its final written decision, the PTAB concluded, in part, that a subset of the claims were indefinite on the basis of the Federal Circuit’s decision in IPXL because the claims recited both an apparatus and a method of using that apparatus and additionally invoked §112(6) for the recitation of a “digital processing unit” element. Further, the PTAB found that it could not apply the prior art to the claims. Thus, the PTAB found that Samsung failed to show that a subset of the claims were unpatentable under any of the asserted grounds. Samsung appealed and challenged the PTAB’s decision not to cancel the claims it found indefinite. Samsung argued in the alternative that the PTAB should have applied the cited prior art to the claims.

The Federal Circuit held that the PTAB may not cancel claims for indefiniteness in an IPR proceeding. To support its finding, the Federal Circuit pointed to the Supreme Court’s statement in Cuozzo that the Patent Office would be acting “outside its statutory limits” by “canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review.” Further, the statutory provisions governing the IPR process do not allow the PTAB to institute review for indefiniteness. The Federal Circuit also rejected Samsung’s contention that the PTAB’s inherent authority to perform claim construction during IPR proceedings means that the PTAB may cancel claims for indefiniteness. Samsung, as the petitioner, was thus not permitted to request the PTAB to cancel the claims for indefiniteness and the PTAB was not permitted to cancel the claims on the grounds of indefiniteness. However, the Federal Circuit found that PTAB erred in applying §112(6) to the term “digital processing unit.” The Federal Circuit also found that the claims could be reviewed in relation to the prior art despite a finding of indefiniteness under IPXL and thus remanded for further consideration on that issue.

Editor: Paul Stewart