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By Howard Shire and Shaleen J. Patel
February 01, 2021

PTAB to Follow Nautilus Standard of Definiteness

On Jan. 6, 2021, Director Andrei Iancu issued a memorandum on behalf of the United States Patent and Trademark Office requiring application of the same standard in matters under the Patent Trial and Appeal Board's (PTAB) jurisdiction that is used by federal courts in determining definiteness under 35 U.S.C. §112. Under this standard, articulated in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), a claim challenged for indefiniteness is unpatentable if the claim read in light of the specification and prosecution history "fail[s] to inform, with reasonable certainty", one of ordinary skill in the art of the invention's scope. Previously, the PTAB used the standard articulated in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014), where a claim was indefinite when "it contains words or phrases whose meaning is unclear."

The memorandum cites the PTAB's confusion as to whether Nautilus or Packard applies in post-grant proceedings. The memorandum cited BASF Corp., v. Ingevity South Carolina, LLC, PGR2020-00037 (PTAB Sept. 10, 2020), which cites both approaches and notes that the Federal Circuit declined previously to decide which one applies to the Post Grant Review process, and Dong Guan Leafy Windoware Co. Ltd., v. Anli Spring Co., PGR2020-00001 (PTAB Apr. 20, 2020), where the PTAB noted that the issue of which standard applies remained an "open issue."

To support the decision, the memorandum stated that the change were made at least partially because "the office's claim construction standard in AIA post-grant proceedings now aligns with that used by courts in a civil action, and … indefinite questions are generally considered as part of the claim construction process." The change was implemented with goals to "lead to greater uniformity and predictability, improve the integrity of the patent system, and help increase judicial efficiency."

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