Petitioners are finding themselves caught in a Catch-22. The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims. Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies.

Recently, the PTAB decided that only some claims of Immersion Corporation’s U.S. Patent No. 8,659,571 were challengeable by Apple Inc. in an IPR because the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation” recited in claim 12 to determine the scope and meaning of claim 12. Apple Inc., v. Immersion Corporation, IPR2016-01372, Paper 7 (January 11, 2017). The Board concluded that because it could not “determine the scope and meaning of claims 12-18,” it “cannot conduct the necessary factual inquiry for determining obviousness with respect to these claims, such as ascertaining differences between the claimed subject matter and the prior art.” Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)) (“[A] claim cannot be both indefinite and anticipated.”); and In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).

The Board held that because they cannot “determine the scope and meaning of claims 12-18,” they “cannot conduct the necessary factual inquiry for determining obviousness with respect to these claims, such as ascertaining differences between the claimed subject matter and the prior art.”

Immersion’s ’571 patent relates to touch screen technology, describing and claiming a system and method for producing a dynamic haptic effect based on a gesture signal and a device sensor signal. A dynamic haptic effect is described as a haptic effect that evolves over time as it responds to input parameters, such as a gesture signal or a device sensor signal.

The challenged claim recites a “gesture signal,” a “dynamic interaction parameter,” and a “drive module.” The Board found an express definition of “gesture” in the Specification. It adopted Immersion’s proposed construction for “dynamic interaction parameter.” With respect to “drive module,” however, the Board noted that the term “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6” (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (en banc in relevant part)).

After reviewing the Specification, the Board concluded that it could not discern the scope and meaning of claims containing “drive module” (i.e., claims 12-18) because “drive module” is described only in purely functional terms and does not impart any structural significance to the term. Immersion countered that claim 12 recited a “drive module” that is “electronically coupled” to a “haptic output device” and a “drive circuit,” arguing that the “drive module” must therefore be a hardware component capable of being electronically coupled to other hardware components. Prelim. Resp. 17. The Board rejected this argument, finding that Immersion failed to cite an explicit disclosure in the Specification that indicated that the “drive module” was a hardware component, circuitry, or any other physical entity having a sufficiently definite structure. The Board found that the only description of the “drive module” provided in the Specification identifies the “drive module” as merely software or program instructions for generating drive signals, stored in memory and executed by a processor. As a result, the Board found that the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation.”

Having determined that a construction of the claim was impossible, the Board concluded that it could not conduct the necessary factual inquiry for determining obviousness with respect to claims 12-18. The Board accordingly was unable to conclude that the Petitioner was reasonably likely to prevail in its challenge with respect to claims 12-18 and declined to institute an IPR of those claims.

This brings us to consider how these claims might fare in district court. District courts and the PTAB apply different claim construction standards, which may result in claim constructions of different breadth. The “broadest reasonable interpretation (BRI)” standard (In re Packard, 751 F.3d 1307 (Fed. Cir. 2014)) is used for claim interpretation of unexpired patents in the Patent Office, and the BRI is often cited as a reason for the high rate of unpatentable claims at the PTAB. The “ordinary meaning” standard (Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc)) is used in district court. Because of the differences in standards, a party may have a better chance of invalidating a patent in IPR than in district court. In fact, the broader construction of the BRI standard is often cited as a reason for the high rate of unpatentable claims at the PTAB. Although a broader interpretation of a claim allows the introduction of more prior art for use in invalidating a claim, it also might increase the risk of product infringement. These differences between district court and IPR claim constructions require careful consideration of both standards by practitioners in arguing for a particular construction, particularly if proceedings in both forums are likely.