Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess.
SUMMARY
On January 6, 2021, the United States Patent and Trademark Office (“USPTO”) published a Memorandum that changed the indefiniteness analysis under 35 U.S.C. §112 that the Patent Trial and Appeal Board (“PTAB”) applies in post-grant proceedings under the America Invents Act (“AIA”) so that it conforms with the standard that the district courts apply, i.e., based on the U.S. Supreme Court’s
Nautilus decision.
1 Before now, the PTAB and district courts have analyzed the indefiniteness of a claim using two different legal standards, which were generally referred to as the
Packard and
Nautilus standards, respectively.
2,3 The Memorandum was spurred by the USPTO’s 2018 decision to align the claim construction standard used in AIA post-grant proceedings with that of the district courts, thus shifting the PTAB from using the broadest reasonable interpretation (“BRI”) standard to the district courts’
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Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads: The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention (emphasis added). The meaning of the statute was most recently explicated by the Supreme Court in
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014), which established the standard that the inherent imprecision of language cannot create ambiguity . . . so great that it creates a zone of uncertainty around the patent claims. In practice, this led the Court to require reasonable certainty in claim language, a standard the patent claims at issue failed to satisfy in the Federal Circuit s recent decision in