CAFC Implies PTO Might Overlook Some 112 Issues
The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review. This is because the IPR statutes only authorize trial grounds based on patents and printed publications. The same has been true of patent reexamination for decades.
Last week, in
The Court explained (here):
This is essentially how the Board operates today. Prior to SAS, claims with 112 issues, most typically claims with unsupported means-plus-function (112(f)) structure, would be excluded from trial. Post-SAS, if such claims are in the minority, the trial proceeds only on the prior art grounds. But in the
On remand, the Board should address
That is, for claims deemed indefinite for mixing method and apparatus statutory classes, the confusion is more on the infringement side. So, assuming a trial ground demonstrates the system in a distributed or stand-alone form, perhaps the 112 debate is only academic.
Given means-plus-function deficiencies under 35 U.S.C. § 112(f) are more common before the PTAB, this argument may find applicability there as well. (Note: MPF claims in the dispute above were found supported on appeal so the issue was not reached). In the case of deficient MPF claims the claimed function (method in IPXL context) is not the issue, it is the underlying structure (apparatus) that is in question as unsupported. Given the expertise of the agency in identifying such support, a truly unsupported 112(f) claim is just functional claiming. Why send that defective claim away from the expert agency if the prior art meets the same generally disclosed function of the specification?
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