Invalidating a Patent Under 35 U.S.C. § 112 in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

When Congress enacted the America Invents Act authorizing the new inter partes review (“IPR”) proceedings, they made clear that an IPR petitioner could challenge a patent only under 35 U.S.C. § 102 and § 103, and only on the basis of patents and printed publications.  See 35 U.S.C. § 311(b).  Congress did not authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112.  However, this does not mean that the Board is prohibited from invalidating patent claims under § 112 in an IPR.  Specifically, the statute mandating that the Board issue a final written decision does not appear to place limits on the Board’s ability to consider invalidity under other grounds.  Rather, the statute states that:

the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

See 35 U.S.C. § 318(a) (emphasis added).

Indeed, the Board is currently grappling with the issue of whether they may address other sections of the patent laws when confirming the validity of a patent during an IPR. During a recent IPR hearing, Judge Sally Medley asked counsel how the Board could confirm the patentability of a patent claim, if the claim is invalid under § 112:

JUDGE MEDLEY: What if we get involved in the trial and we determine, “Hey, we can’t figure out what these claims mean.” . . . What’s the Board to do? Do you believe that 318(a) does not give us the authority to say those claims are indefinite under 112 2nd[?] . . . 318(a) says the Board can issue a final written decision with respect to the patentability. So . . . if we can’t figure out what a claim is, you know, I think that gives us the authority to enter [a] patentability determination with respect to the claim[.] . . . [The statute] [d]oesn’t say [that we may invalidate a claim] just with respect to prior art. Doesn’t say anything. It just says determine patentability. . . . [This is] something that we’re grappling with.

See IPR2013-00029, No. 48 Oral Hearing at 53-55 (P.T.A.B. Jan. 2, 2014).

The issue the Board raises is not hypothetical. In their institution decision in IPR2013-00172, the Board noted that two challenged claims failed to comply with 112 ¶ 4 (requiring dependent claims “contain a reference to a claim previously set forth”). The Board noted the deficiency and stated that Patent Owner “should provide sufficient explanation or evidence as to how dependent claims . . . further limit the subject matter of the claim from which they depend.” IPR2013-00172, No. 8 Institution Decision at 7 (P.T.A.B. Jul. 29, 2013). In contrast, in their institution decision in IPR2013-00252, the Board refused to acknowledge petitioner’s argument that a claim lacked antecedent basis. Instead the Board stated in a footnote that they would “address only those grounds of unpatentability asserted under §§ 102 and 103.” See IPR2013-00252, No. 12 Institution Decision at 18 (P.T.A.B. Sep. 25, 2013).

To date, the Board has not invalidated a single challenged claim under § 112 in an IPR proceeding. However, the Board has considered§ 112 grounds in deciding motions to amend. For example, the Board has stated that “it is permissible [for petitioner] to argue. . . that Patent Owner’s proposed substitute claims are unpatentable under 35 U.S.C. § 112.” IPR2013-00120, No. 24 Notice at 3 (P.T.A.B. Oct. 17, 2013). In fact, in the Board’s first final written IPR decision, the Board rejected patent owner’s proposed substitute claims because they failed to comply with the written description requirement of 35 U.S.C. § 112 ¶ 1. See IPR2012-00001, No. 59 Final Decision (P.T.A.B. Nov. 13, 2013).

It remains to be seen whether the Board will invalidate a challenged claim under the written description or definiteness requirements, especially given current IPR procedure, which may not provide parties a full opportunity to brief the issue. As it stands now, the Board is “grappling” with the issue, but has not ruled out the possibility. However, the fact that the Board can deny proposed substitute claims for failing to meet § 112 requirements, ensures that § 112 issues will continue to arise in IPR proceedings.