Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Samsung Elecs. Am., Inc. v. Prisca Engineering Corp., 2019-1169, -1260 (Feb. 4, 2020). In 2016, Prisua sued Samsung for infringement of U.S. Patent No. 8,650,591 (“the ’591 patent”), which claims apparatuses and methods for enhancing video data streams. Samsung then filed an IPR seeking to declare claims 1-4, 8 and 11 of the ’591 patent unpatentable. In the IPR, the PTAB concluded in a final written decision that claims 1-4 and 8 were indefinite, and that Samsung therefore could not meet its burden of proving these claims unpatentable. Claim 11 was found invalid as obvious.
On appeal, the Federal Circuit confirmed that the PTAB “may not cancel claims for indefiniteness in an IPR proceeding.” The Court explained that “[t]he statutory provisions governing the inter partes review process do not permit the Board [i.e., PTAB] to institute inter partes review of claims for indefiniteness,” citing 35 U.S.C. § 311(b). The Court further stated that, even outside the statute for instituting an IPR, “the Board [cannot] cancel those claims as indefinite on its own accord” because the IPR petition “‘define[s] the contours’ of an IPR proceeding.”
The Court rejected various arguments by Samsung on the indefiniteness issue. The Court disagreed with Samsung’s contention that 35 U.S.C. § 318(a), which covers final written decisions, allows the PTAB to make final determinations on broader grounds than the institution decision because this reasoning “divorces the final written decision provision” from the rest of the statute. The Court also determined that the context of the IPR statute limits the issues considered in an IPR to fewer than those considered in a post-grant review proceeding, where indefiniteness can be an issue. Finally, the Court disagreed that the PTAB’s authority to perform claim construction during an IPR means the PTAB can cancel claims as indefinite.
The Court ultimately remanded the case for further consideration of whether claims 1-4 and 8 were invalid under 35 U.S.C. §§ 102 or 103 even in light of the indefiniteness issue. The remand did not include claim 11 because the Court affirmed the obviousness finding on that claim.