Can patent claims be invalidated because they are indefinite in inter partes review? INTEL v. ALACRITECH

A patent is a government granted monopoly on an invention for a limited period of time, issued to the inventor of an invention. An inventor can apply for a patent in the United States by filing a patent application with the United States Patent and Trademark Office. For the patent application to be granted by the United States Patent and Trademark Office the inventor must demonstrate that the invention new, useful and not obvious. If the USPTO grants the patent application, the inventor is granted the exclusive right to use make sell and import the machine into the United States. If someone other than the inventor exercises one of the exclusive rights granted by a patent, this is known as patent infringement. A patent owner can request and injunction from a court to stop patent infringement and can sue to recover monetary damages for patent infringement which has occurred.

After a patent is granted it is still subject to review. The America Invents Act introduced inter partes review, which is a method to invalidate a patent. Inter partes review is a trial proceeding conducted at the Patent Trial and Board (PTAB) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Inter partes review is a quasi judicial proceeding performed by the PTAB. This means that there are certain formalities that must be followed. One of those formalities is that the PTAB can only review the aspects of a patent for which it is authorized. If the PTAB exceeds its statutory authority than its decision can be overturned on appeal.

INTEL CORPORATION, CAVIUM, LLC, DELL, INC., v. ALACRITECH, INC., 2019-1443 (C.A.F.C. 2020) is an example of a case where the PTAB declined to invalidate a patent for reasons outside the scope of an inter partes review.

Respondent owns U.S. Patent No. 7,124,205. The ’205 patent is directed to a system and method for accelerating data transfer between a network and storage unit. The claimed invention recites an interface device that is connected to a host computer and performs portions of network communications, including network layer and transport layer processing. Respondent sued for infringement of the ‘205 patent, Petitioner petitioned for inter partes review.

Three pieces of prior art were presented at the inter partes review. A scholarly article by Thia and two scholarly articles by Satran. The Patent Trial and Appeal Board held that the majority of the claims of the ‘205 patent were obvious but declined to invalidate some of the claims. A majority of the PTAB agreed with Petitioners argument claims 31-33 might be indefinite but declined to invalidate claims, because the PTAB in an inter partes review does not consider issues of validity under 35 U.S.C. § 112. Petitioner appealed the decision to the Court of Appeals for the Federal Circuit.

On appeal Petitioner argued that 35 U.S.C. § 318(a) requires the PTAB to issue a final written decision addressing the patentability of all claims in an instituted inter partes review, even if for reasons outside the statutory grounds of institution. The Federal Circuit disagreed. The Federal Circuit noted that Section 318(a) requires that the PTAB to issue a final written decision with respect to the patentability of all challenged claims, within its authority. It does not grant the PTAB authority to act outside its statutory limits by holding a patent claim unpatentable as indefinite under § 112.

Because indefiniteness is outside the scope of an inter partes review, the PTAB’s finding that the claims are likely indefinite is not binding and the Federal Circuit declined to review the issue. The Federal Circuit affirmed the PTAB’s decision.

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