CAFC Implies PTO Might Overlook Some 112 Issues
The Patent Trial & Appeal Board (PTAB) does not accept trial
grounds under 35 U.S.C § 112 in Inter Partes Review.
This is because the IPR statutes only authorize trial grounds based
on patents and printed publications. The same has been true of
patent reexamination for decades.
Last week, in Samsung Elec. Am., Inc. v. Prisua Eng'g
Corp., the Federal Circuit considered whether the Board may
cancel claims under 112 when such issues arise during trial. The
Court held that the PTAB may not cancel claims under 112, but
instead, might, for certain types of claims, proceed to
decide the prior art grounds.
The Court explained (here):
Congress viewed a challenge based on indefiniteness to be
distinct from a challenge based on sections 102 and 103. As such,
the proper course for the Board to follow, if it cannot ascertain
the scope of a claim with reasonable certainty for purposes of
assessing patentability, is to
