PTAB Terminates IPR Sua Sponte Where Claims Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review ("IPR") before the Patent Trial and Appeal Board ("PTAB" or "Board") based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102 or 103, respectively. This prior-art based inquiry generally involves an evaluation of patents or printed publications that the petitioner relies on in an IPR petition. Other potential invalidity theories, such as indefiniteness under § 112, cannot form the basis for instituting an IPR. However, a recent decision from the PTAB illustrates a potential outcome in an IPR where the Board has nonetheless determined, on its own, that the challenged claims are indefinite.