The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so boldly tried to persuade the Board and the court otherwise. A $4.3 million willful infringement judgment will lead even the biggest of corporations to give it a try. The try, though, wasn’t all that remarkable. The court patiently swatted aside the statutory construction arguments as either lacking proper context or overlooking important distinctions within the broader statutory framework. No, what’s remarkable is that the Board said the patent’s challenged apparatus claims were indefinite and that it could not therefore determine whether prior art rendered the claims unpatentable.
In disposing 10,000 IPRs, the Board has construed hundreds of thousands of claims. It is therefore hard to fathom how the Board could possibly conclude it was unable to construe the main patent claim. Sure, the claim recited both an apparatus and a method of using the apparatus—a clear “no-no” under IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). But the patent applicant understood the claim’s scope when it sought the patent. The Patent Office (examiner) understood the scope when it examined and then allowed the application to issue as a patent. A federal district judge in Florida understood the scope when he construed the claim as part of an infringement action. The jury understood the scope when it applied the court’s construction to return a verdict that Samsung’s product infringed and that Samsung was willful in its infringing conduct. Samsung understood the scope when it petitioned the Board to institute IPR and cancel the claim as lacking novelty over prior art. The patent owner understood the scope when it opposed the petition. Apparently, everyone understood the scope, except the Board!
As a result of its indefiniteness conclusion, the Board declined to perform the most important function Samsung petitioned it to do: analyze whether the challenged apparatus claims lack novelty over the identified prior art. The Federal Circuit noted that the indefiniteness the Board concluded arises not from an inability to determine the scope of the claims, but rather from the inability to determine if infringement has occurred. Keep in mind that in the parallel infringement action—where Samsung eventually presented the IPXL-issue albeit too late—the jury was able to return a verdict of infringement. The IPXL rationale underlying indefiniteness, said the Federal Circuit, “does not speak to whether the claim is also invalid” over prior art. And so, on Samsung’s appeal, the court concluded that even though the Board lacked statutory authority to cancel the claims based on its indefiniteness conclusion, it should address Samsung’s argument that the Board may analyze patentability of a claim even if the claim is indefinite due to an IPXL issue. On remand, the Board will have that opportunity.
It’s a shame, perhaps, that the court made such a narrow suggestion and then also unnecessarily acknowledged in a footnote the overbroad statement in Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010), that “a claim cannot both be indefinite and anticipated.” Before the Patent Office, a claim of course can be both—just ask anyone who has prosecuted a patent application. Examiners routinely issue both indefiniteness and anticipation rejections of the same claims in the same action. Just because the outer bounds of a claim are indefinite, does not mean its core is. The contrary view is what often fuels wasteful patent litigation, the accused nitpicking the imperfections of a claim rather than sensibly accepting that its actions or the prior art clearly fall within the claim’s scope.
Despite the Enzo reference and quotation, the Federal Circuit conceded that the Board’s conclusion of IPXL-indefiniteness “does not necessarily preclude the Board from addressing the patentability of the claims on section 102 [anticipation] and 103 [obviousness] grounds.” And even if—in the exceptionally rare case—the Board thinks the claims are indefinite, it should still finish the review it instituted and analyze patentability based on the printed prior art. The court did not suggest as much. But come on, the Board is comprised of technically-trained administrative patent judges at the agency responsible for examining and issuing patents! If a federal district judge and jury can comprehend the claims, surely the Board must.