In a recent IPR order, Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, No. 65 (PTAB March 7, 2014), the PTAB terminated the IPR because it deemed the claims to be defective under 35 U.S.C. §112.  In particular the PTAB found that “the scope of the claims of the … patent cannot be determined without speculation. Consequently, the differences between the claimed invention and the prior art cannot be determined … and we do not attempt to apply the claims to the prior art.”  Order, p. 8.

This order is unique because the AIA limits IPR challenges to 35 U.S.C. §§ 102 and 103.  That is, §112 is not a basis for challenging the claims.  However, the AIA does not appear to prohibit the PTAB from considering other issues related to patentability, such as §112 issues, after the IPR has been granted.  In particular, 35 U.S.C. §318(a) permits the PTAB to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added,” without limitation to §§ 102 and 103.

Another notable aspect of this decision is that the PTAB did not issue a decision invalidating the claims under §112—it terminated the IPR.  Thus, the claims of the patent still stand as if the IPR had never been filed.  Of course, if the patent were to be asserted, a district court would likely consider the PTAB’s order terminating the IPR to have persuasive authority regarding the validity of the claims.