The US Court of Appeals for the Federal Circuit imposed limits
on what the Patent Trial and Appeal Board (PTAB) is authorized to
do by statute when dealing with challenged claims in an inter
partes review (IPR) that it finds to be too indefinite to
apply prior art. Samsung Elecs. Am., Inc. v. Prisua Eng'g
Corp., Case Nos. 19-1169, -1260 (Fed. Cir. Feb. 4, 2020)
(Bryson, J).
Prisua Engineering owns a patent on a video-editing technique
and related apparatus. Samsung Electronics America petitioned for
IPR of several claims, asserting anticipation and obviousness
grounds. The PTAB instituted on only one of the challenged claims,
but declined to institute as to the remainder of the challenged
claims, finding they were indefinite for application of prior art
and therefore Samsung could not establish a reasonable likelihood
of prevailing on anticipation or obviousness. Pursuant to the
Supreme Court's decision in SAS Institute (
IP Update, Vol. 21, No. 5), the PTAB later
