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:
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:
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:
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.