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IP Alert: PTAB Cannot Invalidate Original Patent Claims Under 35 U.S.C. 112 in an IPR

May 20, 2020

On May 15, in Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, the Federal Circuit identified a second circumstance where the Patent Trial and Appeal Board (PTAB) must consider invalidity arguments even if the challenged claim might otherwise be held to be indefinite. The America Invents Act (AIA) limits the scope of a petition for inter partes review (IPR) to grounds that “could be raised under section 102 or 103.” As noted in our summary of Samsung Electronics America, Inc. v. Prisua Engineering Corp., during IPR proceedings the PTAB cannot invalidate existing claims for indefiniteness under 35 U.S.C. § 112. Further, because presumptively indefinite claims lack a clear scope, the PTAB also cannot evaluate invalidity of an indefinite claim over the asserted prior art grounds. But circumstances exist where the PTAB must evaluate the validity of presumptively indefinite claims. The Samsung case identified a first such circumstance for claims that are uncertain because they include both method and apparatus limitations. The Cochlear case has now identified a second such circumstance for claims with optional limitations.

Oticon Medical filed a petition for IPR, challenging multiple claims in U.S. Patent No. 7,043,040 owned by Cochlear. Claim 10 of the ’040 patent recites a “directivity means comprising at least one directivity dependent microphone and/or signal processing means.” The PTAB held this claim was likely to be indefinite because “signal processing means” constituted a means-plus-function term under section 112 and the ’040 patent failed to disclose corresponding structure. Claim 10 is likely indefinite in this context because the scope of the structure corresponding to the signal processing function is not identified. When the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, it must decline to institute the IPR or, if the indefiniteness issue affects only certain claims, it must conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or 103. Here, the PTAB concluded that it could not assess the validity of claim 10 relative to the prior art.

The Federal Circuit, however, reversed and remanded, holding that claim 10 includes alternative limitations—because the term “signal processing means” is not a required element. The ”and/or” language in the claim means that a device with “at least one directivity dependent microphone” would fully satisfy the claimed directivity means. The Federal Circuit noted the earlier Samsung case, which establishes that indefiniteness of a claim does not always imply inability to conduct a prior-art analysis needed for an IPR. In Samsung, the claims were indefinite because they included both method and apparatus limitations, leaving uncertainty concerning the scope of the claim. As a consequence, though, invalidity could likewise be shown by art disclosing either a method or apparatus. In Cochlear, the Federal Circuit extended this reasoning to the alternative limitations in claim 10. The court directed the PTAB to consider on remand whether the “directivity dependent microphone” alternative is a means-plus-function term, and whether any of the asserted prior art discloses this alternative.

Because indefinite claims may still be amenable to invalidation in an IPR proceeding, parties to such proceedings should pay close attention to the nature of the alleged indefiniteness. For more information on this case, please contact Fitch Even partner David A. Gosse, author of this alert.

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