After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners, PTAB Litigation Blog

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The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims "particularly pointing out and distinctly claiming subject matter which the applicant regards as his invention." 35 U.S.C. §112(b). IPR proceedings (unlike PGRs and CBMs) are limited by statute to prior art challenges, and a patentability challenge in an IPR petition cannot be based on indefiniteness or other § 112 grounds. See 35 U.S.C. § 311(b); Cuozzo Speed Technologies v. Lee, 136 S.Ct. 2131, 2141-42 (2016) ("canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review’ is “outside [the PTAB’s] statutory limits.").

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