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.
