Authored by Anthony A. Hartmann
Inter partes review (IPR) is the most popular pest-grant proceeding established by the America Invents Act of 2011. Intended as an alternative to civil litigation, an IPR proceeding is a trial-like procedure for challenging U.S. patents before a three-judge panel of the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO).
But unlike civil litigation, a petitioner in an IPR proceeding may only challenge the patentability of an original claim based "on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications." 35 U.S.C. § 311 (b).
The PTAB has emphasized that it cannot institute an IPR proceeding based on other proposed grounds for rejection, such as indefiniteness under 35 U.S.C. § 112. See ETS-Lindgren Inc. v. Microwave Vision, S.A., IPR2015-01048, Paper 6. A claim is indefinite when the claim, viewed in light of the specification and prosecution history, "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus Inc. v. Biosig Instruments, Inc. 134 S. Ct. 2120, 2124 (2014).
However, the reality is that indefiniteness has been a factor during claim construction. See Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005).
As explained by the PTAB, "[i]f the scope and meaning of the claims cannot be determined without speculation, the differences between the challenged claims and the prior art cannot be ascertained. In other words, '[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.'" Micron Tech. Inc. v. Innovative Memory Systems, Inc., IPR2016-00324, Paper 11 at 8-9 (PTAB June 13, 2016) (citing BlackBerry Corp. v. MobileMedia Ideas LLC, IPR2013-00036, Paper 65 (PTAB Mar. 7, 2014)); cf Alarm.com Inc. v. Vivint, Inc., IPR2015-02004, paper 14 at 9-10 (PTAB Mar. 31, 2016) (finding it unnecessary to construe allegedly indefinite claim terms, as the petition is denied on other grounds).
Indeed, this inability to construe a claim limitation has led the PTAB to not institute an IPR proceeding with respect to all or some challenged claims in nearly a dozen cases.
In some of these cases, the petitioner subsequently relied on the PTAB’s finding to attack the claims before a district court. For example, in Medshape Inc. v. Cayenne Medical Inc., the PTAB concluded that "Petitioner has not demonstrated that the recitation of [a limitation] . . . viewed in light of the specification and prosecution history, sufficiently informs those skilled in the art about the scope of the invention with reasonable certainty," and thus "has not shown a reasonable likelihood that it would prevail." IPR2015-00848, Paper 9 at 11-12 (PTAB Sept. 14, 2015).
While Medshape failed to provoke an IPR proceeding against certain claims, it later obtained a summary judgment ruling of invalidity in a parallel district court proceeding, relying on the PTAB decision. Cayenne Medical Inc. v. Medshape Inc., No. 2.14-cv-0451, 2016 U.S. Dist. LEXIS 60444 at *19-20 (D. Ariz. May 6, 2016). The district court found that "[t]he PTAB’s finding is compelling evidence that the term . . . is indefinite." Id. at *8-9. This appears to be the only instance of a district court finding indefiniteness based in-part on the PTAB’s decision not to institute an IPR.
Medshape, however, contrasts with the outcome in Fortinet v. Sophos. Following the PTAB’s decision not to institute due to the indefiniteness of a means-plus-function limitation in Fortinet, Inc. v. Sophos, Inc., IPR2015-00617, Paper 9 at 18-19 (PTAB Aug. 13, 2015), Fortinet sought summary judgment of invalidity in a district court. Fortinet, Inc. v. Sophos, Inc., 2015 U.S. Dist. LEXIS 146317 at *13 (N.D. Cal. Oct. 28, 2015).
There, the Court found a lack of clear and convincing evidence that the claim was indefinite. Id. at *25-26. While the Court found the PTAB’s decision "persuasive" in some aspects, it emphasized that the decision was "not binding in any way." Id. at *28.
The contrasting outcomes of Medshape and Fortinet at the district court level is not surprising. A review of these cases shows that there are a number of factors that could influence how the PTAB’s finding is weighed, if at all:
*The PTAB decision has no preclusive effect in the district court, because it is not appealable. 2016 U.S. Dist. LEXIS 60444 at *8. "It is axiomatic that a judgment is without preclusive effect against a party which lacks a right to appeal that judgment." See Penda Corp. v. United States, 44 F.3d 967, 972-73 (Fed. Cir. 1994). Here, the PTAB’s decision to not institute on a claim is non-appealable. 35 U.S.C. § 314(d).
*The PTAB and the district court are not asking the same question. See 2015 U.S. Dist. LEXIS 146317 at *28-29; 2016 U.S. Dist. LEXIS 60444 at *8. The issue before the PTAB is whether the petitioner presented evidence establishing unpatentability over the prior art, including necessary claim constructions; not indefiniteness. 37 C.F.R. § 42.104(b)(3) & (4); see also, ETS-Lindgren Inc., Paper 6 at 2 n.1 & 13 (noting lack of authorization to rule on indefiniteness; yet unable to construe claim limitation in light of specification). In contrast, the issue before the district court is whether the party has proven the claims to be indefinite.
*The relevant standards and burdens of proof are different. See 2016 U.S. Dist. LEXIS 60444 at *8-9. Even if the questions asked were the same, the applied standards and burdens of proof are not. Whereas the PTAB applies the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b) for claim construction, a district court applies the claim construction standards of Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). And, whereas a petitioner before the PTAB has the burden to prove unpatentability by a preponderance of the evidence under 35 U.S.C. § 316(e), a defendant in a district court must prove indefiniteness by the higher clear and convincing standard. Nautilus, 134 S. Ct. at 2130 n.10.
And, of course, the district court may simply disagree with the merits of the PTAB’s analysis. See Microwave Vision, S.A. v. ETS-Lingren, 2016 U.S. Dist. LEXIS 131729 at *26 (N.D. Ga. Sept 20, 2016).
At the end of the day, a decision by the PTAB is but a single factor that a district court may weigh when making its own determination on the issue of indefiniteness. Accordingly, a finding of indefiniteness by the PTAB does not mean the issue has a definite resolution.
Originally printed in Inside Counsel on September 4, 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.