IPR May Not Cancel IPXL-Indefinite Claims, But May Review Them For Novelty/Nonobviousness
Samsung Electronics America, Inc. v. Prisua Engineering Corp., __ F.3d __, 2020 WL 543427 (Fed. Cir. Feb. 4, 2020) (Prost, Newman, BRYSON) (PTAB) (3 of 5 stars)
Fed Cir part-affirms, part-reverses IPR decision cancelling one Prisua claim, confirming others. Prisua’s patent relates to editing a video stream so as to substitute some element in the original video with a replacement element. The PTAB did not err by deciding not to cancel five claims it deemed indefinite because the Board may not cancel claims for indefiniteness in IPR. The opinion discusses § 311(b) as conferring authority to cancel claims in IPR only on obviousness or anticipation grounds. It also reasons that per SAS, 138 S. Ct. 1348 (2018), the Board may not cancel claims of its own accord in a once-instituted IPR because the IPR’s scope is set by the petition, not the Board. § 318(a) does not authorize the Board to take up definiteness because a final decision of the Board must relate to the rest of the IPR proceeding. That the Board may review § 112 compliance for new claims added in IPR does not authorize it to take up § 112 review for challenged claims, and the opinion notes that § 316 (governing amendments in IPR) does not limit patentability review, while § 311 does. That the Board may construe claims in IPR does not authorize it to cancel claims for indefiniteness. “[T]he proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether the petitioner had established the unpatentability of those claims under sections 102 or 103.” Op. at 16. In such circumstances, “the petitioner would not be estopped by 35 U.S.C. § 315(e) from challenging those claims under sections 102 or 103 in other proceedings.” Id. at 16 n.3.
The PTAB erred, however, by finding the term “digital processing unit” to be a means-plus-function claim, and the opinion describes how the term has sufficient structure to avoid such treatment.
The PTAB also erred by reasoning that because certain claims were unclear as to whether they address an apparatus or a method (i.e., they are indefinite under IPXL, 430 F.3d 1377 (Fed. Cir. 2005), which was undisputed on appeal), they could not be evaluated for novelty or nonobviousness. “[IPXL] does not speak to whether a claim is also invalid for obviousness, regardless of whether it is treated as being directed to an apparatus or a method.” Op. at 20. On remand, the PTAB should determine whether the claims are patentable under §§ 102, 103.
The PTAB did not err in determining that a separate Prisua claim is invalid for obviousness. The Board did not err by deeming one of Prisua’s arguments waived for failure to timely raise it (i.e., to raise it in the briefing). That Prisua had touched on the issue in supplemental briefing filed after the PTAB modified its institution decision post-SAS to address additional grounds was not sufficient. The opinion analyzes the record and rejects Prisua’s other arguments for nonobviousness.
KEYWORDS: INTER PARTES REVIEW; INDEFINITENESS (YES); INDEFINITENESS (NO); OBVIOUSNESS (YES)