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IP Alert: PTAB Will Use Different Standard Than Courts for Indefiniteness

August 30, 2017

In a rare precedential decision, the Patent Trial and Appeal Board (PTAB) confirmed it will continue to view a claim as indefinite when “it contains words or phrases whose meaning is unclear.” In this recent decision in James G. McAward et al., the PTAB declined to adopt the U.S. Supreme Court’s standard for definiteness as applied in district court patent litigation—that a claim is indefinite if it does not “inform those skilled in the art about the scope of the invention with reasonable certainty.” The PTAB attributed the distinction to the differing roles of the USPTO and the courts in the patent system and to the different claim construction standards used by these entities.

Under 35 U.S.C. § 112, a patent specification must conclude with “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention. This is known as the “definiteness” requirement in patent law, the purpose of which is to “secure to the patentee all to which he is entitled” and “apprise the public of what is still open to them.” Ironically, the standard for evaluating definiteness is not exactly definite itself and has changed through the years. Most recently, in Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court replaced an “insolubly ambiguous” standard with one that “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”

Meanwhile, the USPTO has declined to use either the pre- or post-Nautilus standards for definiteness. It has instead used the Packard standard, which establishes prima facie indefiniteness when “after applying the broadest reasonable interpretation to the claim, . . . the metes and bounds of the claimed invention are not clear.” Although the Nautilus decision marked a change in the standard for indefiniteness used by courts in litigation, the PTAB confirmed in this decision that it did not understand Nautilus to mandate a change in the USPTO’s approach to indefiniteness and will continue to apply the Packard standard.

Why is there one standard in the USPTO and another in the courts? According to the PTAB, the distinction is a consequence of another difference in the way patent claims are evaluated by the USPTO. The USPTO applies a “broadest reasonable interpretation” (BRI) standard for claim construction, which differs from the narrower Phillips standard used during patent litigation in the federal courts. Under BRI, claim terms are given their plain meaning unless the plain meaning is inconsistent with the patent specification.

In contrast, when construing patent claims, district courts consider the claims, specification, and prosecution history, as well as evidence extrinsic to the patent. Because the BRI standard focuses on the patent specification and excludes the other types of evidence taken into account under the Phillips standard, the Phillips standard can sometimes produce a narrower construction than the BRI standard. Application of the BRI standard in the USPTO has been approved by the Supreme Court because during prosecution of a patent, the applicant has the opportunity to amend the claims to overcome a rejection. In other words, an indefiniteness rejection begins what is intended to be an interactive process in which the applicant has an opportunity to respond to the rejection. However, in district courts, the language of an issued patent is static. The patent owner no longer has the opportunity to amend the claims in the context of the litigation. This, according to the PTAB, justifies its departure from the Supreme Court’s Nautilus standard for indefiniteness and its use of the Packard standard, which it described as setting a “lower threshold” for ambiguity.  

This decision is important because patent applicants and litigants alike need to understand that the standard for indefiniteness in the USPTO differs from the standard in the courts. During prosecution, it is unlikely that responding to an indefiniteness rejection under § 112 by citing the Nautilus standard will gain traction with an examiner. The PTAB’s decision should not result in any change in how claims are evaluated in the USPTO, but the decision has clarified that the Nautilus standard does not apply in the USPTO.

One question left unanswered by this decision relates to the USPTO’s review of patents post-issuance. For example, under the AIA post-grant review procedure, patents may be reviewed within the first nine months of their issuance. In that procedure, a recently issued patent may be challenged on indefiniteness grounds. It is unclear, in that context, which standard would apply. Presumably, since that proceeding is in the USPTO, its Packard standard will apply rather than the Nautilus standard. However, the justification for application of the Packard standard may not be as forceful in the context of a post-grant review proceeding where a patent owner must file a motion for leave to amend the claims, which the PTAB rarely grants. (In a 2016 study by the USPTO, motions to amend claims were filed in only 10 percent of completed and pending trials and granted in only 2 percent of those motions.)

In addition, the PTAB’s decision in McAward may be affected by the Supreme Court’s upcoming review of Oil States Energy Services vs. Greene’s Energy Group. As reported in our earlier alert here, the Court will consider the constitutionality of AIA post-grant review procedures, including its claim amendment process and application of the BRI standard, both of which served as the basis of the PTAB’s decision to use the Packard standard for indefiniteness. 

For more information on this ruling, please contact Fitch Even partner Joseph F. Marinelli, author of this alert.

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