Winning at the PTAB Can Be a Real Loser

Posted by Elisabeth Hunt on Nov 5, 2015

IPR challenges can only be based on prior art patents and printed publications; the PTAB does not have authority to invalidate claims for being indefinite, much as it might want to. So when a claim is indefinite and therefore cannot be construed, the PTAB can only dismiss the petition. Sound like a win for the patent owner? Maybe. But the district court may be paying attention, and it may not be long before the claim that survived IPR gets killed in court under the indefiniteness roadmap already laid out before the Board.

TLI Communications, for example, had its patent claims invalidated for indefiniteness (and patent-ineligible subject matter) by the district court, in a decision that cited the PTAB’s earlier indefiniteness finding in support of the court’s own analysis. In Sarif v. Brainlab, the defendants’ expert was able to convince the court to construe means-plus-function claim terms as lacking supporting structure (which makes them indefinite), using the same rationale that had already been demonstrated effective (to provoke an indefiniteness finding, although not to invalidate the claims in IPR) at the PTAB. 

Litigation defendants face a tricky decision over indefinite claims in IPR: Attack the claim as indefinite and get your petition thrown out? Or construe the claim for IPR invalidation and appear to concede that the claim is definite? But the patent owner can still lose either way.

Topics: Petitioners, Patent Owners

Wolf Greenfield's Post-Grant Blog

Here, the Post-Grant Proceedings Group
at Wolf Greenfield keeps you up to date
on the latest decisions and best practices, and what they mean for you. Learn more about the group and its members.

New Call-to-action
New Call-to-action
New Call-to-action

Subscribe to Email Updates

Recent Posts

Follow Us

This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.