PTAB cannot cancel claims as indefinite, Fed Circuit says
The US Court of Appeals for the Federal Circuit yesterday, February 4, said that the Patent Trial and Appeal Board (PTAB) cannot invalidate patent claims for indefiniteness.
The ruling came as Samsung won a rehearing of an inter partes review (IPR) of a smartphone photography patent, which it also argues should be invalidated as obvious.
Patent claims are considered to be ‘indefinite’ if the language is not precise enough. The PTAB can invalidate claims on grounds such as obviousness, but according to yesterday’s judgment, not because they are indefinite.
The court ruled that the PTAB is required to review the patentability of all claims identified in a successful IPR petition, and that it can still determine the patentability of indefinite claims on other grounds, such as obviousness.
Prisua Engineering sued Samsung in 2016, alleging that the ‘Best Face’ feature on several Samsung smartphones infringed its patent (US number 8,650,591).
Samsung responded by successfully petitioning for IPR of the ‘591 patent. Although Samsung had put forward four different grounds for invalidation, the PTAB agreed only to hear its case that claim 11 of the ‘591 patent should be invalidated as obvious.
This was because the PTAB held that claims 1-4 and 8 of the patent were indefinite, and that it therefore did not have the authority to consider any arguments relating to these parts of the patent.
In 2018, the board was forced to row back on its refusal to hear the indefiniteness arguments, after the US Supreme Court ruled that the PTAB could not “pick and choose” which claims to review in IPR proceedings, but rather must “must address the patentability of every claim challenged by the petitioner”.
After the filing of supplemental briefs related to claims 1-4 and 8, the PTAB reiterated its position that it could not invalidate the claims because they were indefinite.
Samsung appealed to the Federal Circuit, which yesterday backed the PTAB on the indefiniteness issue, but ordered the PTAB to review the claims for obviousness.
The South Korean company argued that the PTAB has the authority to cancel claims that it finds indefinite. But according to the Federal Circuit, citing US Supreme Court precedent, the PTAB would be acting “outside its statutory limits” by doing so.
“In essence, Samsung’s argument is that there is no limit to the Board’s authority to make unpatentability determinations at the conclusion of an IPR proceeding. That position is at odds with both the statutory language and the case law, and we reject it,” the Federal Circuit ruled.
But the Federal Circuit did accept the South Korean smartphone maker’s alternative argument that the PTAB should review the indefinite claims for obviousness in light of prior art.
The court remanded the case for further IPR proceedings, and instructed the PTAB to consider Samsung’s argument that it may still cancel the indefinite claims on the separate grounds of obviousness.
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