PTAB to follow judicial approach in AIA ‘indefinite’ challenges
The US Patent and Trademark Office (USPTO) has clarified the way in which the Patent Trial and Appeal Board (PTAB) should approach the issue of indefiniteness in post-grant proceedings, aligning the PTAB’s approach with that of the courts.
The guidance was shared in a memorandum addressed to members of the PTAB and signed by Andrei Iancu, director of the USPTO, Andrew Hirshfelt, commissioner for patents, and Scott Boalick, chief administrative patent judge, on Wednesday, January 6.
Under statute, patent claims which do not meet the standard set out in 35 U.S.C. § 112 of the America Invents Act (AIA) are deemed to be invalid for indefiniteness.
“Until recently, the approaches for both claim construction and indefiniteness used by the office for AIA post-grant proceedings differed from that used by the courts,” the memo explained.
In 2014, the US Supreme Court considered the issue of indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc.
The Supreme Court determined that a claim challenged for indefiniteness is unpatentable if the claim, read in the context of the specification delineating the patent and the prosecution history, fails to inform those skilled in the art with reasonable certainty about the invention’s scope.
However, during the same year, the US Court of Appeals for the Federal Circuit found that claims are indefinite when they contain words or phrases whose meaning is unclear (In Re Packard). This confirmed the USPTO’s existing approach to examining indefiniteness.
The PTAB continued to use the Packard approach to assess indefiniteness, including in matters arising in AIA post-grant proceedings, until 2018.
In 2018, the USPTO changed the claim construction standard used in post-grant proceedings from that of the “broadest reasonable construction” to the same claim construction standard which would be used to construe the claim in a civil action, in court.
Wednesday’s memo noted that, since then, there has been “confusion” between whether the PTAB applied the approach of the Supreme Court in Nautilus or of the Federal Circuit in In Re Packard in AIA post-grant proceedings.
Now, the USPTO has confirmed that the PTAB will follow the guidance issued in Nautilus in AIA post-grant proceedings. Examining indefiniteness generally falls under the claim construction process, so the board’s approach to this should align with that of the courts, the signatories said.
This means that both the PTAB and the courts will find that the claim of a patent challenged for indefiniteness is unpatentable for indefiniteness if that claim fails to inform those skilled in the art about the scope of the invention.
“Aligning the indefiniteness approach in AIA post-grant proceedings will promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings,” the memo said.
It concluded that this will improve the integrity of the patent system and help to increase judicial efficiency.
The memorandum does not change the USPTO’s approach to claim construction or indefiniteness in proceedings other than post-grant proceedings.
Pan Lee, counsel at Axinn, Veltrop & Harkrider, said the guidance "continues the trend of aligning post-grant proceedings with district court litigation".
"The certainty that the board will be applying the Nautilus standard will help both petitioners and patent owners better focus their briefing in limited space," Lee added.
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