Petitioners challenging patents with known indefiniteness issues must carefully consider their options when filing an IPR, which may address only a claim's patentability in view of the prior art under 35 U.S.C. § 102 or 103 — not under 35 U.S.C. § 112. The PTAB also requires an IPR petition to explain "[h]ow the challenged claim is to be construed." 37 C.F.R. § 42.104(b)(3). Thus for claim terms to be construed under §112 ¶6, an IPR petitioner must stake out a position to "identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function." Id. In the event the PTAB finds the challenged claim indefinite, no IPR will be instituted, and the petitioner will be left with no assessment of patentability but definitive claim constructions positions it may not want to be locked into at an early stage of litigation.
In its recent decision Samsung Display Co. v. Funai Electric Co. (IPR 2015-01452), the PTAB declined to institute an IPR because the claims were indefinite. There was much agreement between the Petitioner and Patent Owner. Both agreed that the claim was not supported by the specification. Both parties also agreed on the corrective course of action: rewriting the claim. However, the Petitioner and the Patent Owner proposed divergent ways to rewrite the claim. In its opinion, the PTAB noted that neither party cited legal authority for such action. Relying on Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) the PTAB declined to rewrite the claim to preserve its validity and thus declined to institute an IPR.
Although the denial of an IPR petition on indefiniteness grounds provides no findings regarding prior art, it may serve the useful function of facilitating settlement. In the event the litigation goes forward either party may entertain a motion in limine to exclude the IPR decision from evidence.
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