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IP Alert: Indefiniteness Does Not Necessarily End PTAB's Patentability Inquiry

January 13, 2022

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR) petition simply because it contains a potentially indefinite claim term. Despite lacking the authority to invalidate claims based on indefiniteness, the PTAB must make its own definiteness determinations and further must make a patentability determination on each challenged claim unless indefiniteness of a claim term renders such a determination impossible.

Intel challenged every claim of the ’949 patent owned by Qualcomm in three IPRs. The PTAB consolidated the cases and issued a final written decision holding the challenged claims unpatentable, except for claims 1–9, 12, 16, and 17.

The Federal Circuit vacated the PTAB’s decision as to the upheld claims for two reasons. First, the Federal Circuit vacated the PTAB’s decision regarding claims 1–9 and 12 because it found that the PTAB failed to adequately construe the phrase “hardware buffer.” In the final written decision, the PTAB agreed with Intel that “hardware buffer” meant not a temporary buffer. The PTAB concluded the asserted prior art did not disclose a non-temporary buffer and therefore declined to find those claims unpatentable.

The Federal Circuit expressed dissatisfaction with the PTAB’s purely negative claim construction, finding the PTAB’s construction did not adequately articulate what the inventors actually invented. The Federal Circuit stated that a more substance-focused analysis was needed. While there is no per se rule against a negative construction, the court posited that further substantive analysis would likely support an affirmative construction.

Second, the Federal Circuit vacated the PTAB’s decision regarding claims 16 and 17, which included means-plus function terms, because the PTAB failed to conduct its own determination whether the specification disclosed sufficient corresponding structure to support those terms, and further failed to address whether the patentability challenges could be resolved despite any potential indefiniteness.

In the institution decision, the PTAB suggested the ’949 patent lacked sufficient structure to support the means-plus function terms of claims 16 and 17. In subsequent briefing, Intel agreed, and the PTAB found that this admission meant that Intel, as the petitioner, failed to meet its burden of demonstrating the unpatentability of those claims based on the asserted art. The Federal Circuit held that the PTAB must make its own determination whether there is sufficient structure in the specification to support the means-plus-function limitations, and whether the absence of that structure precludes resolution of Intel’s prior art challenges.

The Federal Circuit reasoned that the PTAB, under 35 U.S.C. § 318, is obligated to issue a final written decision with respect to patentability of a claim on the presented prior art grounds. However, this obligation does not mean the PTAB must reach a patentability determination if the determination is rendered impossible because of indefiniteness. Notably, the Federal Circuit reiterated that the statutory estoppel provisions of 35 U.S.C. § 315(e) do not apply if the claims are indefinite because the problem was created by the patentee, not the challenger.

The Federal Circuit further explained that it is not always impossible to adjudicate a prior art challenge just because one limitation of a claim is indefinite. For example, the asserted art may fail to teach a different limitation of the challenged claim. The Federal Circuit explained that “the indefiniteness of a limitation . . . precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.”

Here, the PTAB did not make its own determination on whether the specification identified sufficient corresponding structure to the means-plus-function terms, and therefore the PTAB failed to consider whether a patentability determination was impossible. In other words, the PTAB must determine whether it can resolve the prior art challenge despite any indefiniteness.

This decision is notable because the PTAB now may not decline to address the patentability of a challenged claim merely because of the indefiniteness of a claim limitation. This obligation to address patentability unless logically impossible is an issue that practitioners should consider. Petitioners should be aware that they can still receive an adverse decision finding the challenged claims not unpatentable, even if the PTAB cannot ascertain the scope of a claim term. Patent owners should be aware that it may be critical to argue claim limitations other than a potentially indefinite limitation, because they can still overcome a prior art challenge despite the potentially indefinite limitation.

For more information on this topic, please contact Fitch Even partner Paul B. Henkelmann.

Fitch Even associate Prestin Van Mieghem contributed to this alert.

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