Definite I win, indefinite you lose
In a trio of cases over the past year, the Board has denied institution or terminated IPR proceedings because it found that the challenged claims were indefinite and, therefore, could not be construed. Although that result means no IPR finding of unpatentability, it does leave in its wake a very probative–but not binding–finding of indefiniteness by the highest administrative law body at the USPTO.
In each case the indefiniteness issue arose from the interpretation of means-plus-function claims under Section 112, para. 6. The claims at issues are briefly summarized below:
In Space Exploration Techs. v. Blue Origin (IPR2014-01170), institution was denied on March 3, 2015, because no structure was described in specification for performing the following functions:
- “means for igniting the one or more rocket engines”
- “means for shutting off the one or more rocket engines”
- “means for reigniting at least one of the one or more rocket engines”
In Ericsson Inc. v. Intellectual Ventures II LLC (IPR2014-01170), institution was denied on Februrary 17, 2015, as to several claims because no structure was described in the specification for performing the following functions:
- “means for allocating a tier of service”
- “means for determining a total number of data packets”
- “means, operably coupled to the aforementioned means, for allocating a proportion of said total number of data packets”
In Blackberry Corp. v. Mobilemedia Ideas (IPR2013-00036), the proceedings were terminated on March 7, 2014, because no structure was described in the specification for performing the following functions:
- “processing means for encrypting the information signals prior to storage in said memory means”
- “scheduling logic for providing said communication resource to queued packet data users on a tier-by-tier”
Strategy tip: Denial of institution based on a finding of indefiniteness may indeed be a win for a petitioner, and petitions can be drafted to encourage the Board to make such findings. However, in most cases petitioners will want to propose a construction (even if barely supportable) for a questionable claim term so long as the cited prior art reads on this construction. After all, the primary goal is cancellation of the patent and a Board finding of indefiniteness will not achieve that.