In Samsung Electronics America v. Prisua Engineering Corp., the U.S. Court of Appeals for the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) can no longer invalidate patent claims as indefinite in inter partes review (IPR) proceedings. As a result, some patents may be more difficult to challenge. Law360 interviewed Finnegan partner Dan Tucker for his perspective on the decision and what this means for petitioners.
One key takeaway from the ruling was that the PTAB may start denying more petitions if they want to avoid issues of indefiniteness. One way to address the issue would be for Congress to change the statute to allow the PTAB to invalidate patents as indefinite in IPRs, much like they can for post-grant reviews (PGRs) and covered business method reviews (CBMs). Dan said, “It's not expanding their task at hand because the PTAB is already determining whether the claims are indefinite as part of the prior art invalidity analysis. It's expanding their jurisdiction, but it's not expanding what they're already determining. It's just giving them the authority to act on that determination.”
Another key takeaway was that the PTAB’s ruling that claims are indefinite may not have an impact on a district court decision, as district court judges are not obligated to follow the PTAB’s ruling. Dan said, “It's a judge-specific issue, but for the most part district court judges are a little reluctant to rely on the findings of the PTAB. They view their court as their domain and they're going to reach a decision on their own, independent of what they would probably say is dicta in the PTAB decision."
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