948 F.3d 1342
Fed. Cir.
2020
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Background

  • Prisua owns U.S. Patent No. 8,650,591 (’591), claiming apparatus and method steps for substituting a user-selected image (pixels) into an original video to produce an edited video stream; claims 1–4, 8 (apparatus/dependent) and claim 11 (method) were challenged in an IPR by Samsung.
  • The PTAB initially refused to institute review of claims 1–4 and 8 because it found those claims indefinite (IPXL-type conflation of apparatus and method) and concluded the “digital processing unit” invoked §112 ¶6 without corresponding structure; the Board instituted review of claim 11 (obviousness over Sitrick).
  • After SAS, the Board extended institution to all challenged claims and grounds, but in its final decision again held claims 1–4 and 8 indefinite and declined to cancel them (finding it lacked statutory authority to cancel for indefiniteness); it found claim 11 obvious over Sitrick and canceled claim 11.
  • Samsung appealed, arguing the Board should have canceled claims 1–4 and 8 for indefiniteness or, alternatively, should have applied the prior art (§§102/103) despite any IPXL issue; Prisua cross-appealed the Board’s obviousness decision as to claim 11.
  • The Federal Circuit held the Board is not authorized to cancel claims as indefinite in an IPR, reversed the Board’s §112 ¶6 ruling (the term “digital processing unit” is structural), affirmed the Board’s invalidation of claim 11, and remanded for the Board to consider §§102/103 patentability of claims 1 and dependents in light of the court’s §112 ¶6 ruling and the IPXL issue.

Issues

Issue Samsung's Argument Prisua's Argument Held
Whether the PTAB may cancel challenged claims as indefinite in an IPR Board may cancel claims as indefinite at final decision even if petition did not raise §112 Board: IPR statute limits grounds to §§102/103; PTAB lacks authority to cancel for indefiniteness PTAB may not cancel claims for indefiniteness in IPRs (statutory limits, Cuozzo/SAS explained)
Whether PTAB can apply §§102/103 prior art to claims the Board deems indefinite (IPXL-type) Even if claims are indefinite, PTAB can still assess anticipation/obviousness under instituted grounds If claims are indefinite, PTAB should not apply prior art; indefiniteness must be resolved elsewhere Remanded: PTAB erred by not deciding §§102/103 after correcting §112 ¶6 error; must decide whether IPXL-type indefiniteness prevents §102/103 analysis on remand
Whether the term “digital processing unit” invokes means-plus-function (§112 ¶6) Term is structural (general-purpose CPU/computer) and does not invoke §112 ¶6; Board erred Board: term is functional, lacks corresponding structure, so §112 ¶6 applies Reversed the Board: “digital processing unit” denotes structure and §112 ¶6 does not apply here
Whether claim 11 is unpatentable as obvious over Sitrick Sitrick discloses capturing user input stream, data entry device, spatial matching (morphing), extraction of pixels, and motion-vector application Prisua: Sitrick lacks several limitations (capturing user input, data entry device, equal lengths/widths, motion-vector application) Affirmed: substantial evidence supports Board’s finding that Sitrick taught claim 11 and that claim 11 is obvious

Key Cases Cited

  • Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (PTAB may not cancel claims for indefiniteness in IPR; IPR scope is statutory)
  • SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) (petitioner defines the scope of IPR; Board must address all instituted claims/grounds)
  • IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (claims that conflate apparatus and method can be indefinite)
  • Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (presumption against §112 ¶6 unless term lacks sufficiently definite structure)
  • Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017) (indefiniteness involves claim construction principles)
  • Neptune Generics, LLC v. Eli Lilly & Co., 921 F.3d 1372 (Fed. Cir. 2019) (IPR scope is limited; Board cannot address issues beyond §§102/103 such as §101)
  • LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364 (Fed. Cir. 2006) (references to known computing components can be treated as structural)
  • Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350 (Fed. Cir. 2011) (claim terms that reference familiar classes of devices can denote structure)
  • Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) (discussion of interplay between indefiniteness and other invalidity grounds)
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