United States: Inter Partes Review: Indefinite Claims Can't Play

In a petition for inter partes review (IPR), the petitioner may challenge a patent claim only on grounds of anticipation or obviousness under 35 U.S.C. § 102 or 103, and using only patents and printed publications. 35 U.S.C. § 311(b). The statute does not allow IPR petitioners to challenge a patent claim for failure to comply with the requirements of § 112. Nevertheless, petitioners and patent owners that believe § 112 issues have no impact on whether an IPR is instituted are missing part of the picture. Decisions from the Patent Trial and Appeal Board (Board) illustrate that a claim's failure to comply at least with § 112's definiteness requirement has a substantial impact whether an IPR can be instituted and lead to a finding from the Board that could be used to challenge the patent in subsequent proceedings.

Determining whether the petitioner has established a reasonable likelihood of proving the unpatentability of the claims challenged in an IPR petition requires the Board to begin its analysis by construing the claims. Because in an IPR there is no presumption of validity, the Board does not apply a rule of construction with an aim to preserve the validity of the claims. See RF Controls, LLC v. A-1 Packaging Solutions, Inc., IPR2015-00119, Paper 15 at 8-9 (Apr. 29, 2015). The Board must, therefore, necessarily consider whether the claim is definite, such that it makes itself amenable to construction. Id. Indeed, the Board has explicitly rejected requests from petitioners, arguing that the Board "may and should construe claim language to avoid interpretations which would invalidate the claims under § 112." Id. at 9. If the Board concludes that a challenged claim is indefinite, the Board will not institute IPR on that claim, as application of the prior art against a claim that fails to inform the scope of the claimed invention with reasonable certainty would be speculative. See Actifio, Inc. v. Delphix Corp., IPR2015-00014, Paper 13 at 41-42 (Apr. 16, 2015).

The indefiniteness analysis is even more important when one or more of the challenged claims in the IPR recites a means-plus-function term. The Board's rules require the petitioner to "identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function" in claims written in means-plus-function format, and the question of definiteness of means-plus-function terms is inherently part of the analysis undertaken by both the petitioner and the Board at the outset of the proceeding. See 37 C.F.R. § 42.104(b)(3). Thus, any acknowledgment by the petitioner that the specification fails to provide corresponding structure for a recited function or that the specification's discussion of the same is insufficient, may raise a red flag for the Board that an indefiniteness problem may exist. The Board recently addressed these issues in Space Exploration Technologies Corp. v. Blue Origin LLC, IPR2014-01378, Paper 6 (Mar. 3, 2015).

In Space Exploration, the petitioner sought to invalidate claims 14 and 15 of U.S. Patent No. 8,678,321 ("the '321 patent"). The challenged claims are directed to systems involved in the landing and recovering of reusable launch vehicles (RLV) used for space exploration. See id. at 2. Independent claim 14 recites:

14. A system for providing access to space, the system comprising:

a space launch vehicle, wherein the space launch vehicle includes one or more rocket engines;

a launch site;

a sea going platform;

means for launching the launch vehicle from the launch site a first time, wherein the means for launching include means for igniting the one or more rocket engines and launching the vehicle in a nose-first orientation;

means for shutting off the one or more rocket engines;

means for reorienting the launch vehicle from the nose-first orientation to a tail-first orientation before landing;

means for reigniting at least one of the one or more rocket engines when the launch vehicle is in the tail-first orientation to decelerate the vehicle;

means for landing at least a portion of the launch vehicle on the sea going platform in a body of water, wherein the means for landing include means for landing in the tail-first orientation while the one or more rocket engines are thrusting; and

means for launching at least a portion of the launch vehicle from the launch site a second time.

(Emphases added.) In proposing its constructions for the means-plus-function limitations "means for igniting" and "means for shutting off," and presumably in an effort to preserve its § 112 arguments, the petitioner asserted that the specification of the '321 patent does not disclose corresponding structures for performing the claimed functions. Space Exploration, IPR2014-01378, Paper 1 at 18-19. Nevertheless, petitioner urged the Board to give these terms their broadest reasonable construction by finding that "any suitable structure" for performing the claimed function could be the corresponding structure. Id. The patent owner did not file a preliminary response.

In declining to adopt the petitioner's proposed construction, and denying institution of IPR of the challenged claims, the Board began by pointing to the specification's minimal discussion of the igniting, shutting off, and reigniting functions recited in claim 14. Space Exploration, IPR2014-01378, Paper 6 at 6. Looking to the figures in the '321 patent, the Board found that the figures did not "shed any light on the corresponding structure." Id. The Board also highlighted that in the specification, the patentee acknowledged that "several details describing structures and processes that are well-known and often-associated with launching and landing space launch vehicles are not set forth in the [written disclosure] to avoid unnecessarily obscuring the various embodiments of the disclosure." Id. at 8 n.5 (emphasis added). In light of this evidence, the Board declined to institute IPR, noting that "[a]ny comparison with the prior art asserted in the Petition would be speculative and futile." Id.

The outcome of this petition can be contrasted with the petitioner's success in persuading the Board to institute IPR of other claims in the same patent challenged through a different petition. Space Exploration Techs. Corp. v. Blue Origin LLC, IPR2014-01376, Paper 7 (Mar. 3, 2015). The challenged claims in the second petition are directed to the methods of "operating a space launch vehicle" and methods for "transporting a payload to space," as illustrated by representative claim 1 below:

1. A method for operating a space launch vehicle, the method comprising:

launching the space launch vehicle from earth in a nose-first orientation, wherein launching the space launch vehicle includes igniting one or more rocket engines on the space launch vehicle;

reorienting the space launch vehicle to a tail-first orientation after launch;

positioning a landing structure in a body of water; and

vertically landing the space launch vehicle on the landing structure in the body of water in the tail-first orientation while providing thrust from at least one of the one or more rocket engines.

The two decisions in Space Exploration highlight valuable lessons for practitioners. For IPR petitioners, the decisions illustrate the need to carefully consider including statements related to potential § 112 arguments in the petition. If such statements are necessary, petitioners should only include clarifying, nonargumentative statements about potential issues with the claims. While the Board conducted its own analysis of the proper construction, it undoubtedly also placed weight on the petitioner's admission that the specification lacked disclosure of the corresponding structures. For patent owners considering asserting the challenged claims against potential infringers, these decisions raise the issue of the practical impact of a Board's finding of indefiniteness in a decision to institute IPR. While the patent claims still stand after a Board's denial of institution based on indefiniteness, a district court could give the Board's ruling persuasive weight during litigation and find the patent invalid for indefiniteness.

For patent drafters, the decisions highlight that any statements made in the specification may be understood as admissions by the patentee for different issues related to the patentability of the claims. Thus, care should be taken to ensure that the specification does not include statements that can negatively impact the breadth or patentability of the claims down the road. While the original intent of the statement "several details describing structures and processes that are well-known and often-associated with launching and landing space launch vehicles are not set forth in the [written disclosure] to avoid unnecessarily obscuring the various embodiments of the disclosure" was likely added to avoid limiting the claims, it inadvertently helped the Board reach a finding of indefiniteness. The decisions also illustrate the benefit of covering the invention using different types of claims. While the Board may have found that the system claims are indefinite—and in practice, the claims may be weak―the Board's finding does not invalidate the claims. For patent prosecutors, the decisions also reiterate the need to carefully examine the specification and prosecution history of an application before adding new claims or proposing claim amendments. In light of the specification, it may have been good to amend the claims to recite the system avoiding means-plus-function limitations or perhaps to avoid introducing the claims (if the claims were added later).

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