CAFC Refuses Remand on 112 6th Deficiencies
When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature. Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule. To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is precluded from officially making such an indefiniteness determination. Instead, the Board will simply conclude that the rule has not been satisfied.
A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes.
Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective