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ARTICLE · 04 JULY 2015

Inter Partes Review: Indefinite Claims Can't Play

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In a petition for inter partes review (IPR), the petitioner may challenge a patent claim only on grounds of anticipation or obviousness under 35 U.S.C. § 102 or 103, and using only patents and printed publications.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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In a petition for inter partes review (IPR), the petitioner may challenge a patent claim only on grounds of anticipation or obviousness under 35 U.S.C. § 102 or 103, and using only patents and printed publications. 35 U.S.C. § 311(b). The statute does not allow IPR petitioners to challenge a patent claim for failure to comply with the requirements of § 112. Nevertheless, petitioners and patent owners that believe § 112 issues have no impact on whether an IPR is instituted are missing part of the picture. Decisions from the Patent Trial and Appeal Board (Board) illustrate that a claim's failure to comply at least with § 112's definiteness requirement has a substantial impact whether an IPR can be instituted and lead to a finding from the Board that could be used to challenge the patent in subsequent proceedings.

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