This article was first published in the April 6, 2016 edition of the Legal Intelligencer
Inter partes review (“IPR”) is an extremely effective alternative or supplement to litigation, and there are appreciable benefits to challenging an issued patent in an IPR rather than before a federal district court. In an IPR, unlike a patent lawsuit, a challenged patent is not presumed to be valid, nor is clear and convincing evidence required to demonstrate invalidity. Rather, the challenger (Petitioner) need only demonstrate invalidity by a preponderance of the evidence.
A Petitioner may not, however, avail itself of all the defenses available in district court litigation. Rather, IPRs are statutorily limited to challenges “only on a ground that could be raised under section 102 [novelty] or 103 [obviousness]” and based on only patents and printed publications. 35 U.S.C. § 311(b) (emphasis added). Thus, at first glance, it would seem to follow that invalidity defenses, such as indefiniteness under 35 U.S.C. § 112 can play no role in an IPR.
Not so fast. Petitioners and Patent Owners who fail to appreciate how the definiteness requirement of 35 U.S.C. § 112(b) can dramatically alter the outcome of an IPR (and, potentially, bleed into concurrent litigation) proceed at their own peril.
Questions of definiteness are intertwined with claim construction, and claim construction is a necessary stage of IPR. A Petitioner must, as part of the petition for IPR, “identify … [h]ow the claim is to be construed.” 37 C.F.R. § 42.104. Likewise, in considering the Petition, the Patent Trial and Appeal Board (“PTAB”) will construe claims prior to engaging in the anticipation or obviousness analysis.
“Not every such patentability analysis, however, necessarily ends with a determination with respect to the prior art. The language used in a claim to define the scope of coverage, read in light of the specification, may be indefinite and thus fail to indicate the scope of the claimed invention.” Blackberry Corporation v. Mobilemedia Ideas, LLC, IPR2013-00036, Paper No. 65 (March 7, 2014).
In one of the first IPR cases to encounter issues with indefiniteness, Blackberry petitioned for IPR of a patent related to “a mobile communication apparatus for carrying out communication through radio waves” and “an information providing system using the mobile communication apparatus.” The independent claims recited means-plus-function language, including “processing means for encrypting the information signals ….” Blackberry’s petition stated, without expressly raising the issue of indefiniteness, that the challenged patent “does not disclose an algorithm for performing the claimed encrypting function.” MobileMedia conceded this point at the oral hearing.
Under 35 U.S.C. § 112, ¶ 6, “a computer-implemented means-plus-function element is indefinite unless the specification discloses the specific algorithm used by the computer to perform the recited function.” Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). Due to the patent’s silence regarding an algorithm for performing the claimed encryption means, the Blackberry Board concluded it could not construe the claim phrase. As a result, the Board terminated the proceeding because, without an ability to construe the claims, it was “unable to determine obviousness of claims 1-12 of the ‘048 patent under 35 U.S.C. § 103.” Paper No. 65, at p. 21.
Space Exploration Technologies Corp. v. Blue Origin LLC concerned similar facts. IPR2014-01378. SpaceX sought an IPR of Blue Origin’s patent relating to landing and recovering a reusable launch vehicle at sea. The claims recited “means for igniting,” “means for shutting off,” and “means for reigniting” the rocket engines. SpaceX’s petition suggested that while the specification failed to recite any structure for performing the functions of these means claim, the PTAB should construe these limitations as “any suitable structure” that ignites, shuts off, or reignites a rocket engine.
The PTAB rejected SpaceX’s invitation. In particular, the PTAB concluded that “SpaceX’s proposed constructions are erroneous because they seek to broaden the scope of these limitations beyond what is permissible under 35 U.S.C. § 112, ¶ 6.” Paper No. 6, at p. 5. The PTAB further found that SpaceX’s request to use any suitable structure “violate[d]” the Board’s standard of applying the “broadest reasonable construction” to claims in an IPR. Id. (emphasis in original). Turning to the claim language, the PTAB found that the specification failed to provide adequate structural support for the recited means terms and, as a result, rendered those means “not amenable to construction.” Id. at p. 8. The PTAB, unable to construe the terms, thus refused to institute an IPR “because inter partes review is limited to grounds of anticipation and obviousness under 35 U.S.C. §§ 102 and 103, not indefiniteness under 35 U.S.C. § 112.” Id. at p. 9.
Other IPRs have encountered indefiniteness even where the claims did not recite means terms subject to 35 U.S.C. § 112, ¶ 6. In one such case, Microsoft petitioned for IPR of a patent relating to a computer learning system including a detached sensor to monitor a student’s behavior. Microsoft Corp. v. IPLearn-Focus, LLC, IPR2015-00097 Claim 1 recited, among other limitations, “to analyze at least the first set of measurements to identify a speed of the user to view content presented by the display. Microsoft’s petition did not mention indefiniteness, but instead coyly suggested two alternative constructions for this claim phrase: 1) “The first set of measurements is analyzed in order to determine the rate at which the user views content on the display;” and 2) “The speed of the user is determined from the measurements and then used to identify what content to present to the user.”
The PTAB agreed that the claim limitation could be construed both ways and, accordingly, found that the claim limitation was “indefinite under 35 U.S.C § 112, ¶ 2.” Paper No. 11, at p. 9 (March 26, 2015). In particular, the PTAB concluded that “the phrase does not inform those skilled in the art about the scope of the invention with reasonable certainty ….” Id. The PTAB thus rejected Microsoft’s request to institute an IPR for the claims that recited the aforementioned indefinite limitation.
More recently, in Samsung Display Co. et al. v. Gold Charm, the parties agreed that the claim language regarding the location of a “channel” in an LCD device did not make sense as written and should, effectively, be rewritten. IPR2015-01452. Both Petitioner and Patent Owner proposed different revisions to the claim language. The PTAB rejected this joint argument, noting that it had no authority to rewrite claims during an IPR. Paper No. 12, at p. 9 (November 13, 2015). Due to the “speculative assumption as to the meaning of the claims” the PTAB refused to institute an IPR. Id., at p. 13.
What lessons can be drawn from these decisions? As an initial matter, it seems clear that the PTAB will not overstep its statutory authority by rendering claims in an IPR invalid as indefinite. Instead, the PTAB will terminate a pending IPR (Blackberry) or refuse to institute one in the first place (SpaceX, Microsoft, and Samsung). Thus, Petitioners should carefully consider whether an indefiniteness issue could derail a potential IPR. The Petitioner may opt to be mindful about what is said in the petition regarding such issues to avoid emphasizing indefiniteness problems to the PTAB (the PTAB appeared to rely in part on SpaceX’s statement regarding the lack of any disclosed structure supporting the means language).
In some cases, however, such a derailment could actually benefit the Petitioner. In each of the above described IPRs, the PTAB armed the Petitioner with a powerful tool—the PTAB’s conclusion that it could not construe the claims because they are indefinite. While certainly not binding on a district court in related litigation (which employs a slightly different standard of indefiniteness), a ruling by the PTAB regarding indefiniteness may provide leverage to the Petitioner/accused infringer (either through settlement or substantive motion). And due to the mandatory one year timeline to complete an IPR, the PTAB would likely rule on claim construction and indefiniteness issues well before a district court may do so in concurrent litigation. Thus, if timed properly, an accused infringer could obtain the PTAB’s conclusions regarding definiteness approximately six months after filing a petition for IPR and before accumulating significant discovery expenses.