In a recent case, Samsung Electronics America v. Prisua Engineering Corp., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) cannot invalidate patent claims as indefinite during an Inter Partes Review, making some patents more difficult to challenge.
The Federal Circuit rejected an argument that the PTAB had the authority to invalidate claims whose scope would not be clear to a skilled artisan.
Under the America Invents Act (AIA), an Inter Partes Review can only be filed based on the grounds of anticipation and obviousness, whereas a Post-Grant Review (PGR) can be filed based on any grounds that can be used to challenge the validity of a patent claim.
A Difference of Opinion
The problem here is that in an IPR, the PTAB must determine the scope of a challenged claim before determining whether it is anticipated or obvious. In other words, if a claim is indefinite, the PTAB would not be able to determine its scope.
The result of this opinion is that the Board could deem some claims as indefinite without having the authority to cancel them.
The only resource left to the petitioners, with regard to potentially indefinite claims, would be to go to Court.
Please contact me at firstname.lastname@example.org with questions or comments.
Silvia Salvadori, PhD