In late December, in Intel Corp. v. Qualcomm Inc., 2020-1828 (Fed. Cir. Dec. 28, 2021), the Federal Circuit found the PTAB erred by accepting Intel’s stipulation concerning the indefiniteness of a means-plus-function claim term. In this opinion, the Federal Circuit explains that in Inter Partes Review (IPR) proceedings, patentability determinations cannot be circumvented due to a party stipulation. Instead, the Board is required to carry-out patentability determinations unless it is logically impossible to do so.
At issue here is U.S. Patent No. 8,838,949 (the “’949 patent”) owned by Qualcomm. Intel challenged all of the claims of the ’949 patent as unpatentable for obviousness in a series of three IPRs. The Board found that Intel proved claims 10, 11, 13-15, and 18-23 were unpatentable but not claims 1-9, 12, 16, and 17. Intel subsequently appealed this finding.
Claims 16 and 17 are means-plus-function claims governed by 35 U.S.C. § 112(f). During the IPR related to these claims, IPR2018-01335, Intel agreed with the Board’s suggestion in the institution decision that two of the means-plus-function terms in claim 16 (and dependent claim 17) were indefinite for lack of supporting structure. In the Final Written Decision, the Board interpreted Intel’s agreement as meaning it had not met its burden in demonstrating the unpatentability of these claims. The Board did not engage in any further patentability determination with respect to these claims. On appeal, Intel challenged the merits of the Board’s findings.
Federal Circuit Decision
In an opinion written by Judge Taranto, the Federal Circuit held that the Board’s conclusion that Intel did not meet its burden in demonstrating the unpatentability of the claims was erroneous and thus remand was necessary. The Federal Circuit particularly pointed out that the Board erred by not deciding for itself whether the required structure was present in the specification or, in the alternative, whether the absence of the structure precludes resolution of Intel’s prior art challenges.
The Federal Circuit cited to the Supreme Court to support its holding. In SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court construed 35 U.S.C. § 318 as obligating the Board to “issue a final written decision with respect to the patentability of” every claim challenged by the petitioner. The Federal Circuit noted that 35 U.S.C. § 318 does not require the Board reach a determination of patentability if such determination is rendered impossible because of indefiniteness of an essential claim limitation. However, the indefiniteness of a claim does not always preclude the Board from addressing the patentability of these claims. Therefore, indefiniteness of a limitation should only preclude a patentability determination when the indefiniteness makes it logically impossible for the Board to render such a decision. Thus, the Board erred by failing to do so or at least by failing to clearly state in the Final Written Decision that it was impossible to do so.
Judge Taranto points to the overall IPR scheme in support of this holding. In the opinion he explains that the IPR scheme protects the interests of the petitioner, the patentee, and the judicial system by avoiding duplication. Even more, the interests of the public are protected by the IPR scheme as reflected by 35 U.S.C. § 317 which authorizes the Board to answer patentability questions even after a petitioner has withdrawn. According to the Federal Circuit, accepting Intel’s agreement without performing a patentability determination ran contrary to the principles reflected in the IPR scheme that were designed to protect interests beyond that of the petitioner.