Court’s Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208.

The Board requested briefing directed to whether they must terminate a proceeding if a court determines a claim term is indefinite.

On November 19, 2018, the court in the New Jersey Action granted Mylan’s and Dr. Reddy’s motion for summary judgment of invalidity, holding, they could construe the term “target” as “set as a goal,” thereby finding the claims of the ’698 and ’208 patents invalid as indefinite when applying the court’s construction of the term “target” to accused products. ‘272IPR, Pap. 35, p. 4. The Board noted “the New Jersey Action determined that the target clauses limit the claims, and focused on the difficulty a potential infringer might have in determining what acts constitute infringement.” Id. at p. 5. “We interpret the issued claims and determine whether prior art patents and printed publications anticipate the claims or render them obvious.” Id. “[U]nlike a U.S. district court, we do not determine whether the claims comply with § 112, ¶ 2, for infringement purposes.” Id. at p. 6. The Board noted “we are not required to reach the same determinations as the district court.” Id. at p. 8. And held “we cannot reach the same determination as the district court here, as the district court’s determination is based on applying its claim construction to determine infringement, and we are limited to addressing in an inter partes review whether the challenged claims are patentable ‘on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.’” Id. Finally, responding to the Patent Owner’s judicial resources argument, the Board held “[t]hese proceedings…are not in their early stages and, contrary to Patent Owners’ position, we find that terminating these inter partes reviews at this time would waste the significant resources that the parties and the Board already have expended on the proceedings.” Id. at 10. Namely, since the proceedings were already instituted, they should continue.

[Of note, similar decisions were entered in IPR2017-01995 (Patent 9,220,698 B2) and IPR2018-01341 (Patent 9,393,208 B2)]

This article appeared in the May 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.