In IPR proceedings, petitioners may challenge claims only on a ground that could be raised under 35 U.S.C. § 102 or § 103. In CBM and PGR proceedings, petitioner may challenge claims on grounds that can be raised under 35 U.S.C. § 101, § 102. § 103 or § 112. The following cases address the Board’s interpretation of indefiniteness issues under 35 U.S.C. § 112.
Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 (Mar. 7, 2014). The Board terminated the IPR proceeding because the specification of the challenged patent did not disclose a specific algorithm to perform the recited function of a computer-implemented means plus-function term. The Board indicated that due to the indefiniteness of the claim, the Board was unable to reach a determination on the asserted grounds of unpatentability over the prior art.
Ericsson Inc. v. Intellectual Ventures II LLC, IPR2014-01170, Paper 9 (PTAB Feb. 17, 2015). The Board denied institution with respect to a claim which recites the term “logic for.” Although the claim does not recite any “means” features, the Board determined that the claim overcame the presumption that it should not be interpreted as a means-plus-function claim under 35 U.S.C. § 112, ¶ 6, because the claim did not recite any structure for performing the recited function. The Board determined that neither petitioner nor patent owner identified any algorithm for performing the functions contained in the limitations of the claim. Therefore, the Board denied institution because the claim is indefinite.
Boku, Inc. v. Zilidev, Inc., CBM2014-00140, Paper 24 (PTAB Nov. 2, 2015). The Board determined that a claim reciting a means-plus-function limitation was indefinite because the specification does not provide sufficient structure corresponding to the function. If a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with corresponding function in the claim, a means-plus-function limitation is indefinite.
Globus Medical, Inc., v. Flexuspine, Inc., IPR2015-01830, Paper 11 (PTAB Feb. 25, 2016). The Board denied institution because the construction of a claim term could not be reasonably determined. If the scope of the claims cannot be determined without speculation, the differences between the claimed invention and the prior art cannot be ascertained. The Board disagreed with the respective constructions of both petitioner and patent owner. The Board determined that petitioner’s construction was inconsistent with the disclosed embodiments. The Board determined that patent owner’s construction was inconsistent with the arguments patent owner made during prosecution when it introduced the unclear term, which appears only in the claims.
Westerngeco, L.L.C. v. PGS Geophysical AS, IPR2015-00309, Paper 42 (PTAB June 8, 2016). In a final written decision, the Board sua sponte dismissed the petition with respect to dependent claims 18-20. Although not challenged by the parties, the Board determined that these claims do not further limit the claim from which they depend. The Board indicated that it could not correct the dependencies because it would be subject to reasonable debate. The Board therefore determined that it could not correct the improper dependencies of the claims because the claims fail to meet the requirements of 35 U.S.C. § 112, ¶¶ 2 and 4.
Dexcowin Global, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7, 2016). In its petition, petitioner challenged claim 3 as being indefinite under 35 U.S.C. § 112, ¶ 2. The Board declined to institute review for claim 3 because a petitioner is not permitted to assert a ground of unpatentability under § 112 in an IPR. Under 35 U.S.C. § 311(b), a petitioner may only challenge claims on a ground that could be raised under § 102 or § 103 and only on the basis of prior art consisting of patents or printed publications.