Almost one year after instituting an inter partes review (IPR) of US Patent No. 6,871,048 (the ’048 patent), the Patent Trial and Appeal Board (Board) terminated the IPR without proceeding to a final written decision on March 7, 2014.1 In doing so, the Board found the claim indefinite, but the Board cannot actually invalidate the claim because it does not have the authority to do so. So what is a Petitioner to do?

In the case Blackberry Corporation, et al. v. Mobilemedia Ideas, LLC, the Board found that the specification did not provide sufficient corresponding structure for the claim limitation “processing means for encrypting the information signals prior to storage in said memory means,” as required by 35 U.S.C. § 112, ¶6.2 A means-plus-function claim limitation that does not meet the requirement of 35 U.S.C. § 112, ¶6 is indefinite, and as such, the claim should not be patentable. However, the Board is not statutorily authorized to cancel a patent claim as being indefinite under 35 U.S.C. §112 in an IPR.3 Because the Board found that the claims were indefinite, it could not ascertain the scope of the claim and could not compare the claim to the prior art. As such, it could not analyze the claim in light of 35 U.S.C. §§ 102 and 103.

There are a few points worth noting that arise from the Board’s termination decision. First, to institute an IPR proceeding, a petitioner must establish that “there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable [under 35 U.S.C. §§ 102 and 103].”4 In finding this standard met, the Board did not interpret the “processing means for encrypting” limitation at the institution stage of the proceeding despite the fact that this issue was raised by the Petitioner.5 Had the Board determined the scope and meaning of the means-plus-function claim limitations at the time of institution, the time and expense of moving through the trial phase might have been avoided.

Second, the Board’s finding that the “processing means for encrypting” claim limitation is indefinite differs from two District Court claim construction orders. In Mobilemedia Ideas LLC v. Research in Motion LTD, a court in the Northern District of Texas found that the “processing means for encrypting” claim limitation was not indefinite and thus construed the term.6 In a second case, Mobilemedia Ideas LLC v. HTC Corporation, a court in the Eastern District of Texas also declined to find the claim term indefinite stating that “there is no requirement for a specific encryption algorithm to be disclosed in the ’048 patent specification.”7

So what is a Petitioner to do if they think that the claim is indefinite? One option is to challenge the validity in District Court. But at least in the above case, this proved unsuccessful (although, one might argue that a motion for reconsideration is in order given the Board’s decision). A second option is to petition for a post-grant review (PGR) proceeding, when available. In that proceeding, the petitioner can raise unpatentability grounds under 35 U.S.C. §§ 101, 102, 103, and 112.8 However, the timing for filing a PGR petition is more restrictive. Specifically, they must be filed within nine months of the issuance of a patent.9 Accordingly, as PGR-eligible patents begin to issue, parties considering post-grant challenges of a patent should move quickly in their unpatentability analysis, particularly when 35 U.S.C. §§ 101 and 112 issues are in play.

As a patent owner, a strategy to consider would be to wait until the patent has been issued for nine months before filing an infringement action. This would prevent the accused infringer from filing a PGR petition and limit the grounds available for challenging the patent.