PTAB Should Analyze Patentability Even if Claims Are Indefinite

| Christie Matthaei


Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Indefinite claims do not preclude patentability analysis at the PTAB.

Intel Corp. (“Intel”) requested an inter partes review of a patent owned by Qualcomm Inc. (“Qualcomm”). The PTAB found several claims non-obvious over the prior art but declined to rule on other claims, finding that Intel had failed to meet the threshold burden to demonstrate unpatentability.

In reviewing the decision, the Federal Circuit reasoned that the Board failed to fully assess claims 16 and 17 for patentability. Specifically, the Board found that since there were issues of indefiniteness, a full patentability analysis for those claims could not be carried out. The Federal Circuit, however, stated that the “Board did not itself conclude that the prior-art analysis task was impossible” and concluded that the Board should nevertheless address whether the underlying patentability of the claims could be analyzed despite any indefiniteness issues. Accordingly, the Federal Circuit vacated and remanded the Board’s decision.

Editor: Paul Stewart