In a decision that issued on July 28, 2014 in an inter partes review (IPR), the U.S. Patent Trial and Appeal Board (PTAB) in Vibrant Media, Inc. v. General Electric Co (IPR2013-00172) analyzed the patentability of claims that it recognized as failing to comply with the definiteness requirement of 35 U.S.C. § 112, second paragraph. The claims at issue recited a "computer system," but also included method steps. During the IPR, the Patent Owner did not seek to amend the claims to correct the ambiguity, but instead argued that those of ordinary skill in the art would have interpreted the method steps as means-plus-function limitations. The PTAB was not persuaded by this argument, and therefore it chose to interpret the claims as requiring both the apparatus claim elements and the method steps.

The PTAB recognized that these combination apparatus and method claims did not comply with the definiteness requirements of 35 U.S.C. § 112, second paragraph for infringement purposes. However, in determining whether to analyze the claims for patentability purposes, the PTAB distinguished between situations involving "considerable speculation" about the claim scope versus situations involving claim scope that can be determined with "reasonable clarity."

Based on that distinction, the PTAB determined that it would be improper to analyze the patentability of indefinite claims where "considerable speculation" about the claim scope is involved, whereas it is acceptable to analyze the patentability of indefinite claims where the claim scope can be determined with "reasonable clarity."

The PTAB determined that the scope of the claims at issue could be ascertained with "reasonable clarity" and therefore went on to analyze whether the Petitioner demonstrated that the prior art rendered the claims obvious. The claims at issue were held to be invalid as obvious in view of prior art relied upon by the Petitioner.

One Administrative Patent Judge (APJ) on the panel, however, dissented from the majority opinion, arguing that "considerable speculation" was required to determine the claim scope, so there was no reason to conduct the patentability analysis.

Source: Vibrant Media, Inc. v. General Electric Co. (IPR2013-00172) available at: http://e-foia.uspto.gov/Foia/RetrievePdf?system=PRPS&flNm=IPR2013-00172_50

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