Patentability for Novelty and Obviousness in an IPR Can be Addressed Without Understanding the Scope of the Claim

In Samsung Electronics America v. Prisua Engineering Corp. the Fed. Cir affirmed the Board’s decision to not cancel claims which it found indefinite.  The Board had declined to assess patentability of claims which they found, sua sponte, to be indefinite because 1) the claims recited both an apparatus and a method for using that apparatus (IPXL-type indefiniteness) and 2) the claim invoked means-plus-function claiming without identifying any corresponding structure.  The Fed. Cir. acknowledged that Congress had not authorized the Board to challenge patent validity other than under §102 and §103.  The Fed. Cir. rejected Appellant’s assertions that 1) the statute’s direction of the Board to write a decision with respect to “patentability” should be construed broadly and 2) the Board’s authority to decide patentability of patented challenged claims as well as new claims, authorized consideration of compliance under §112 for both challenged claims and new claims.  The Fed. Cir. also held that the Board had erred by invoking means-plus-function, noting the lack of magic words, but remanded to the Board, to decide on the obviousness of claims in spite of IPXL-type indefiniteness.