Section 112 Issues in IPR Proceedings: Using Section 112 as a Sword or a Shield

Description

In IPRs, petitioners may only challenge the validity of issued claims based on anticipation (Section 102) or obviousness (Section 103) grounds. Thus, petitioners may not present challenges based on Section 112. Nevertheless, Section 112 issues often arise during an IPR proceeding, such as when the Patent Trial and Appeal Board (PTAB) construes a claim at issue in an IPR.

The written description requirement is also relevant to determining priority. In some circumstances, the PTAB must determine a patent claim's priority date in connection with determining whether the claim is patentable over the asserted prior art. To make the priority determination of the claim in question, the PTAB must decide if the priority application provides written descriptive support for the claim under 112(a)/first paragraph.

Section 112 requirements play a role in the PTAB’s consideration of motions to amend. Also, in limited circumstances, the PTAB may construe claims to preserve their validity if the claims are interpreted under the Phillips claim construction standard.

After SAS Institute, if the PTAB decides to institute trial, the PTAB must institute with respect to all challenged claims, including claims that could potentially be indefinite under Section 112. This raises strategic considerations of whether IPR challenges are best suited for claims that may be indefinite.

Listen as our authoritative panel of patent attorneys discusses 112 issues that often arise during an IPR proceeding. The panel will address responses by PTAB panels to assertions by IPR petitioners that claims do not comply with 112 and factors to consider when deciding whether to challenge claims in an IPR that might be invalid under 112. The panel will also discuss related claim construction issues, including meeting the claim construction requirements for means-plus-function claims in IPR petitions and requirements for establishing priority of invention from earlier applications or patents. The panel will offer best practices for handling Section 112 issues in IPRs.