PTAB Reviews Patentability Despite Finding of Indefiniteness

August 18, 2014

PTAB reviews


In Vibrant Media, Inc. v. General Electric Co. (IPR2013-00172), a recent inter partes review (IPR) decision, the Patent Trial and Appeal Board (PTAB) analyzed the patentability of claims that recite an apparatus but also include  method steps. Despite recognizing that these claims do not comply with 35 U.S.C. § 112, second paragraph, for infringement purposes, the PTAB chose to determine the patentability of the claims. This is interesting because in an earlier decision with respect to a means-plus-function claim, the PTAB declined to determine the patentability of a claim that was deemed to be indefinite. See Blackberry Corporation v. Mobilemedia Ideas, LLC (IPR2013-00036, Paper No. 65, March 7, 2014) at page 20.

During the prosecution of the patent at issue in the Vibrant Media decision, the Patent Owner amended method claim 50 — which was later renumbered to claim 9 in the issued patent— to describe a computer system. Id. at 11. Claim 9 recites six components of a system, but concludes with the following method step: “comprising the further steps of:  qualifying the matching linkable character string according to qualification criteria which requires the major class code of the matching linkable character string to match a preferred major class code.” Id. at page 6.

Claims 10 and 11 directly depend from claim 9, but refer to “the method of claim 9” and require an additional method step. Id. at page 7.

Despite having the opportunity to file a motion to amend these claims to clarify the ambiguity, the Patent Owner chose to not amend the claims. Id at 8.  Rather, the Patent Owner argued that claim 9 (and somewhat similarly claims 10 and 11) is directed to a system and that one having ordinary skill in the art could have interpreted the method step as a means-plus-function limitation — “further comprising: qualifying means for qualifying the matching linkable character string…” The PTAB was unpersuaded by this argument and chose to interpret claims 9-11 as requiring both the recited apparatus claim elements and the recited method steps. Id. at 11.

The PTAB distinguished between an indefinite claim that requires considerable speculation about the scope of the claim, and an indefinite claim where the scope of the claim can be ascertained with reasonable clarity. Id. at pages 10 and 11. In the first case requiring considerable speculation about the scope of the claim, the PTAB recognized that focusing on the issue of patentability would be improper as the analysis would be based on speculations and assumptions. Id. at page 10. However, in the second case where the scope of the claim can be ascertained with reasonable clarity, the PTAB recognized that focusing on the issue of patentability for the purposes of the IPR is acceptable. Id. at page 11.

The PTAB determined the scope of claims 9-11 could be ascertained with reasonable clarity, in view of the specification and the actions during the prosecution, i.e., rewriting a method claim into an apparatus claim. Id. at 11. Upon finding that the scope of the claims could be ascertained with reasonable clarity, the PTAB stated that “[i]t is not necessary for us to determine whether each of the claims 9-11 complies with § 112, ¶ 2, for infringement purposes in this decision. More importantly, we maintain our focus on the issue of patentability based on the evidence before us.” Id. at page 10. Based on this position, the PTAB determined whether the Petitioner demonstrated that prior art rendered obvious the recited apparatus and method steps. Id. at pages 10, 11, and 29-32.

One Administrative Patent Judge (APJ), dissented from majority opinion by arguing that claims 9-11 indefinite and require considerable speculation to determine their scope because the recited method steps encompass any person or system that performs those steps. Id. at page 51. As a result, the dissenting APJ argued that there is no reason to conduct the patentability analysis. Id. at page 48.

Take Away

Based on this recent IPR, a Patent Owner should thoroughly review the claims at issue and, if necessary, file a motion to amend the claims to clarify any ambiguities that may raise an indefiniteness problem.   Although 37 CFR 42.121(a)(2)(i)  recites that the motion to amend may be denied if the “amendment does not respond to a ground of unpatentability involved in the trial,” a Patent Owner should consider making clarifying amendments when amending to show patentability with respect to prior art.


John Holley


John Holley is an attorney in the firm’s Electrical and Internet/E-Commerce practice groups. He practices in ‎all ‎areas of patent law with an emphasis on counseling clients on intellectual property matters, litigation of ‎intellectual ‎property disputes, and preparing and prosecuting patent applications in the areas of display ‎devices, ‎telecommunications including 3G, 4G LTE, and ATSC-M/H, semiconductor design and fabrication of data ‎storage systems including DRAM, SDRAM, DDR SDRAM. SSD, and Flash, semiconductor packing design and ‎fabrication including SOC, MCP, and POP, automotive electronics, light ‎emitting devices, software, ‎microprocessors, data encryption including NSM and symmetric-key cryptography, circuit layouts, optics and ‎image processing, HDMI, in ‎addition to various technologies in the mechanical arts. John has substantial ‎experience in drafting ‎applications relating to software, semiconductors and other electrical and mechanical ‎technologies. ‎