Activision Blizzard, Inc. v. Acceleration Bay, Inc. presents an interesting situation emphasizing the limited scope of IPR proceedings and the interplay between PTAB practice and co-pending litigation.  In Activision Blizzard., the Petitioners challenged claims of U.S. Patent 6,920,497, a patent directed to “a method of connecting a seeking computer through a portal computer to a network.”  IPR2016-00724, Paper 11 at 2-3 (Sept. 7, 2016).  Of particular note was the challenge to claims 9 and 16.  Claim 9 is an independent claim and reads:

  1. A component in a computer system for locating a call-in port of a portal computer, comprising:

means for identifying the portal computer, the portal computer having a dynamically selected call-in port for communicating with other computers;

means for identifying the call-in port of the identified portal computer by repeatedly trying to establish a connection with the identified portal computer through contacting a communications port or communications ports until a connection is successfully established;

means for selecting the call-in port of the identified portal computer using a port ordering algorithm; and

means for re-ordering the communications ports selected by the port ordering algorithm.  [Id. at 5.]

The PTAB began its discussion of claim 9 by agreeing with the Petitioner that the limitation “means for identifying the portal computer” should be construed under 35 U.S.C. § 112, sixth paragraph.  Id. at 7.  While contending the recited function is “’identifying the portal computer,’” the Petitioner asserted that “the Specification does not disclose [corresponding] structure for this limitation because it does not disclose an algorithm for carrying out the recited function.”  Id. (citing the Pet. at 6, 8).  However, for purposes of the IPR, the Petitioner “contend[ed] the structure for performing the recited function is a software routine that identifies the first portal computer on a list.”  Id. (citing Pet. at 8).  The Patent Owner did not provide an interpretation for any of the terms in the challenged claims.  Id.

The PTAB agreed with the Petitioner regarding the meaning of the claimed function and that “the corresponding structure is software with no sufficiently described algorithm for the software.  Id. at 8.  However, at this point in its analysis, the PTAB parted company with the Petitioner, noting that (1) “’[s]imply reciting “software” without providing some detail about the means to accomplish the function is not enough,’” id. (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2009), and (2) neither is it enough that “a hypothetical person of ordinary skill in the art would know how to design software for identifying a portal computer.”  Id. (citing Blackboard, Inc. v. Desire2Learn, 574 F.3d 1371, 1382 (Fed. Cir. 2009)).  Thus, the PTAB concluded that “[s]ome type of algorithm would be required to complete the function of identifying the portal computer, but neither party has identified such an algorithm in the Specification.”  Id. at 8-9.  Because of this shortcoming, the PTAB could not construe claim 9 or 16 (which depends on claim 9).  Id. at 9 (citing In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011).  Given IPR is not available to challenge claims, except based on 35 U.S.C. §§ 102 and 103, the PTAB refused to grant the petition with respect to claims 9 and 16.  Id.

The PTAB’s Institution Decision on claims 9 and 16 raises many questions.  Given the limited scope of review during an IPR and the lack of any Final Written Decision on the patentability of claims 9 and 16, how will the PTAB’s determination of these claims’ indefiniteness be viewed by the district court(s) in the ongoing corresponding litigation?  Will the court(s) agree with the PTAB’s analysis of Federal Circuit law?  Will Patent Owners that continue to assert claims that the PTAB has held indefinite be subject to a greater risk of attorneys’ fees under § 285?  Given that the PTAB’s indefiniteness determination will not be part of a Final Written Decision, the Patent Owner will not be able to appeal the determination under U.S.C. § 319, nor will the PTAB be able to certify that claims 9 and 16 are unpatentable under 35 U.S.C. § 318(b).  As such, the Petitioners and Patent Owner are effectively left with an advisory opinion from the PTAB concerning the patentability (and arguably validity) of claims 9 and 16.  This advisory opinion is not unique to the Activision proceeding—a number of other IPRs have resulted in similar decisions by the PTAB regarding indefiniteness.  As the numbers increase, it will be interesting to see how district courts view these advisory opinions and how it affects litigants’ strategies both in front of the PTAB and in district court.