CAFC Implies PTO Might Overlook Some 112 Issues
The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review. This is because the IPR statutes only authorize trial grounds based on patents and printed publications. The same has been true of patent reexamination for decades.
Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial. The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds. Continue Reading Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?