PTAB’s Finding of No Corresponding Structure Does Not Alter Court’s Earlier Finding of No Indefiniteness

​ The court granted plaintiff's cross-motion for summary judgment that its electromagnetic radiation testing patent was not invalid because the PTAB's findings during inter partes review did not provide a basis for the court to reconsider its claim construction. "Before the PTAB, the parties made the same arguments they make here. . . . [T]he PTAB . . . found that the [patent-in-suit's] Specification itself failed to 'clearly associate the combination of separate structures disclosed in Figures 1 and 2 as corresponding to the claimed dual functions.' . . . Importantly, and because its authorizing statute limits inter partes review to patentability determinations, the PTAB expressly disclaimed any indefiniteness analysis. . . . At bottom, and regardless of whether the analysis is framed in patentability or indefiniteness terms, the PTAB and this Court simply disagree that the [patent-in-suit] fails to 'clearly associate' the structures in Figures 1 and 2 with the 'both' pivot function. And because neither binding precedent, the parties’ arguments before this Court, nor the analytical heft of the PTAB decision demand that this Court reverse course, its prior indefiniteness finding stands. . . . The Court accordingly disagrees with the PTAB and [defendant]. Claim 12, as the Court previously found, clearly links its functions with corresponding structure. It therefore is sufficiently definite."

Microwave Vision, SA et al v. ESCO Technologies, Inc. et al, 1-14-cv-01153 (GAND September 20, 2016, Order) (Jones, USDJ)