The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant). In this post, we take a look back at how the Court closed out 2021 and began 2022. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest—for the last week of 2021 and the first of 2022.
Precedential opinions: 6 (3 the week of 12/27; 3 the week of 1/3)
Non-precedential opinions: 7 (7 the week of 12/27; 0 the week of 1/3)
Rule 36: 3 (0 the week of 12/27; 3 the week of 1/3)
Longest pending case from argument: Novartis Pharmaceuticals v. Accord Healthcare Inc., No. 21-1070 (179 days)
Shortest (non-Rule 36) pending case from argument:Colicelli v. Department of Veterans Affairs, No. 20-2047 (21 days)
Case of the week(s):Intel Corp. v. Qualcomm Inc., No. 20-1828
Panel: Judges Prost, Taranto, and Hughes, with Judge Taranto writing the opinion
You should read this case if: you have an IPR where a claim limitation may be indefinite
In an inter partes review (IPR), the grounds for cancelling a patent claim are limited. Anticipation and obviousness are grounds for cancellation—but indefiniteness is not. What should happen in an IPR when a claim limitation is indefinite? The Federal Circuit took on that question in our case of the week.
This appeal arises from an IPR in which Intel challenged a patent owned by Qualcomm relating to computer-processor systems. In its institution decision, the Board questioned whether certain terms in one claim were indefinite (because they were means-plus-function terms and lacked the necessary supporting structure). Intel, the challenger, took up that suggestion, arguing that the terms were indefinite. The Board then concluded that Intel had not met its burden of showing that the claims were obvious because it had not identified a structure “to which [the Board] can compare the prior art’s disclosure.”
The Federal Circuit vacated and remanded that determination, holding that the Board’s analysis was incomplete. For the Board not to reach a decision on the merits of the obviousness challenge, it had to determine that the terms were actually indefinite and that this made it impossible to adjudicate the challenge.
In an IPR, the Court explained, the Board is generally obligated to determine the patentability of a challenged claim over the prior art asserted. That obligation does not apply “if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.” The Court held that “going forward,” the Board should “clearly state” when it is relying on that principle.
But just because “some aspect of a claim renders the claim indefinite” does not necessarily make it “impossible to adjudicate a prior-art challenge.” For example, even where one limitation is indefinite, an alternative limitation might be covered by the prior art or the argued combinations or modifications. The Court held, based on that reasoning and statutory clues from “[t]he inter partes review scheme as a whole,” that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.”
The Court held the Board’s analysis deficient for two reasons. First, the Board failed to “decide whether it could resolve the patentability dispute even if claim 16 is indefinite.” Second, the Court also faulted the Board for “simply accept[ing] Intel’s concession that the required structure for the means-plus-function claim was missing.” Instead, the Court held, the Board needed to “itself conclude that the prior-art analysis task was impossible,” which required “determining for itself that such structure was missing.” The Court therefore remanded for the Board to “decide one or both” of those issues.
In a separate section of its decision, the Court vacated and remanded a claim construction relevant to other challenged claims. Interestingly, the Court held the Board’s construction “inadequate” under de novo review but did not construe the term itself. The case thus heads back to the Board for the agency to take another crack at both the impossibility and claim construction issues.