Foust Discusses IPR Denials Indefinite Claims

Shook, Hardy & Bacon Miami Of Counsel Amy Foust wrote an article on recent denials of Inter Partes Review (IPR) from the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office for Law360 on April 6.

Because IPR petitions are rarely denied and IPRs are not supposed to address indefiniteness, Foust found it interesting that three recent IPRs have been denied based on “a PTAB adjudication of indefiniteness.”

Foust writes, “Three PTAB panels, with no overlapping administrative patent judges between the panels, have now denied or terminated IPR proceedings on the ground that the claims could not be construed because they were indefinite.”

In addition to describing the three denied IPR petitions, Foust describes the long-term implications, saying, “Assuming that post-grant review is unavailable, a prospective petitioner should carefully consider how a PTAB finding of indefiniteness might influence the course of a dispute,” noting that “indefinite claims may survive an IPR even if the petitioner has identified strong bases for invalidity under §§ 102 and 103.”