Wednesday, March 12, 2014

IPR Terminated Due to Indefiniteness of Challenged Claims

The Board terminated inter partes review because the challenged claims were indefinite. As a result, the Board was "unable to reach a determination of the alleged grounds of unpatentablilty over prior art." "[T]he scope of the claims of the . . . patent cannot be determined without speculation. Consequently, the differences between the claimed invention and the prior art cannot be determined. . . . [The patent owner] urges us to conduct the prior art analysis based on only the functional recitation of the means-plus-function element. We decline to do so. . . . [T]hat is contrary to the requirements of both 35 U.S.C. § 112, sixth paragraph, and 35 U.S.C. § 103. The obviousness determination is directed to the claimed invention as a whole, not to any partial invention that does not include all of the requirements of the claim. . . . Without ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness."

Petition for Inter Partes Review by Research In Motion Corporation, IPR2013-00036 (PTAB March 7, 2014, Order) (Lee, APJ)

Compliance with Form 18 Insufficient to Plead Infringement

The court granted defendant's motion to dismiss and rejected the argument that compliance with Form 18 was sufficient to state a claim for direct infringement. "[Plaintiff] . . . assert[s] that its case is only for direct infringement and that complaints presenting such claims . . . need only comply with Form 18 . . . [T]o exempt patent complaints from the requirements of [Bell Atlantic v. Twombly, 550 U.S. 544 (2007)] and [Ashcroft v. Iqbal, 556 U.S. 662 (2009)] is to ignore a fundamental rationale that underpins those decisions. . . . [B]efore filing a complaint, counsel must ascertain exactly what claims should alleged to be infringed and how they are infringed. That can be done with brevity and clarity if counsel know at the outset their theories of infringement and what can, and cannot, be said about allegedly infringing conduct. . . . Indeed, it is high time that counsel in patent cases do all of that work before filing a complaint. . . . The current practice is to file a Form 18 complaint and then, using claim charts, prior art charts, discovery, and motions, to pare claims that ought not to have been brought or that cannot withstand careful scrutiny. That process has proven to be an increasingly expensive proposition for the parties and one that takes a tremendous toll on already strained judicial resources."

Macronix International Co., Ltd. v. Spansion, Inc. et al, 3-13-cv-00679 (VAED March 10, 2014, Order) (Payne, J.)

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