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:

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