Samsung Electronics America, Inc. v. Priusa Engineering Corp., Appeal Nos. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020).

Samsung filed an IPR petition against claims 1-4, 8 and 11 of U.S. Patent No. 8,650,591 owned by Priusa. The ‘591 patent was directed to editing video streams by substituting one object for a different one, such as a face. Slip op. at 4-5.

The PTAB initially provided a partial institution of the IPR on claim 11, but declined to institute on claims 1-4 and 8 due to indefiniteness. Neither party raised indefiniteness, but the PTAB determined that claim 1 was indefinite for two reasons, namely (1) the claim included apparatus and method recitations and (2) the phrase “digital processing unit” amounted to a means plus function recitation without identification of a corresponding structure in the specification.   During briefing, the Supreme Court issued its decision in SAS Institute v. Iancu, 138 S.Ct. 1348 (2018) that prohibited partial institution of IPRs. The Board later instituted the IPR on all petitioned claims. Slip op. at 9.

The PTAB held that claim 11 was not patentable, but refused to apply the art against claims 1-4 and 8 due to indefiniteness. The PTAB then held that Samsung had not established that claims 1-4 and 8 were unpatentable.

On appeal, Samsung argued that the PTAB (1) should have canceled claims 1-4 and 8 due to indefiniteness or (2) applied the prior art regardless of the indefiniteness. The Federal Circuit rejected Samsung’s first contention by explaining that indefiniteness cannot be asserted in an IPR. Regarding the second contention, the Federal Circuit held that (1) the PTAB did not point to any evidence that the skilled person would regard “digital processing unit” to be means plus function language, and (2) the PTAB could apply the art to the apparatus and method limitations. The case was remanded back to the PTAB to consider claims 1-4 and 8 in view of the cited prior art. Slip op. at 20.