Indefinite Claims Can Leave IPR Petitioners Empty-Handed

Section 112 indefiniteness issues—particularly in the context of means-plus-function claim limitations—can present difficult problems for IPR petitioners, and, sometimes, these § 112 problems can doom an IPR petition at the PTAB.

The PTAB has acknowledged that, by statute, it cannot cancel a patent claim for indefiniteness under § 112 in an IPR. See Oticon Medical AB et al v. Cochlear Bone Anchored Solutions AB, IPR2017-01018, Paper No. 52 (PTAB Aug. 21, 2018) ("[W]e may not cancel a claim in an inter partes review by finding that claim indefinite.") (citing Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131, 2141-42 (2016) ("[N]or does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for 'indefiniteness under § 112' in inter partes review.")). See also 35 U.S.C. § 311(b) ("The scope of inter partes review is limited to a ground raised under section 102 or 103 and only on the basis of prior art