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Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp.

United States Court of Appeals for the Federal Circuit

February 4, 2020, Decided

2019-1169, 2019-1260


 [*1344]  Bryson, Circuit Judge.

Samsung Electronics America, Inc., appeals from a decision of the Patent Trial and Appeal Board in an inter partes review  [*1345]  proceeding. Samsung petitioned the Board to rule that certain claims of U.S. Patent No. 8,650,591 ("the '591 patent"), owned by cross-appellant Prisua Engineering Corp. ("Prisua"), were unpatentable. At the conclusion of the proceeding, the Board held that claim 11 of the '591 patent was unpatentable based on obviousness. However, the Board declined to analyze whether claims 1-4 and 8 were unpatentable as anticipated or obvious, because it concluded that those claims were indefinite.

On appeal, Samsung contends that the Board should have canceled claims 1-4 and 8 for indefiniteness. In the alternative, Samsung argues that even if the Board was not statutorily [**2]  authorized to cancel those claims for indefiniteness, it should have assessed whether they would have been anticipated or obvious in view of the cited prior art. Prisua cross-appeals from the Board's ruling that claim 11 was unpatentable for obviousness. We affirm in part, reverse in part, and remand.

Congress has long permitted parties accused of patent infringement in federal court to challenge the validity of the asserted patent claims on any ground specified in part II of the Patent Act as a condition for patentability and for failure to comply with any requirement of 35 U.S.C. § 112. See 35 U.S.C. § 282(b)(2)-(3). Over the last few decades, Congress has supplemented federal court litigation by creating several administrative processes that authorize the Patent and Trademark Office ("PTO") to reconsider and cancel wrongly issued claims in some circumstances.

In 1980, Congress established a regime known as "ex parte reexamination." See Act to Amend the Patent and Trademark Laws, Pub. L. No. 96-517, 94 Stat. 3015 (1980), codified at 35 U.S.C. § 301 et seq. Ex parte reexamination gives "[a]ny person at any time" the right to "file a request for reexamination" based on certain prior art "bearing on the patentability" of an already-issued patent. 35 U.S.C. §§ 301(a)(1), 302. After institution, an ex parte reexamination [**3]  follows essentially the same back and forth process between the patent owner and the examiner as in the initial PTO examination. 35 U.S.C. § 305.

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948 F.3d 1342 *; 2020 U.S. App. LEXIS 3292 **; 2020 U.S.P.Q.2D (BNA) 37319


Prior History:  [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-01188.



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Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Patent Law, Claims & Specifications, Specifications, Definiteness, Evidence, Inferences & Presumptions, Presumptions, Particular Presumptions, Description Requirement, Means Plus Function