In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court rejected the Federal Circuit's "insolubly ambiguous" phraseology for evaluating indefiniteness and announced a new standard—whether the claims "fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." The Nautilus case arose from a validity challenge in district court to an issued patent. But while Nautilus was still pending before the Supreme Court, the Federal Circuit in In re Packard distinguished the post-issuance, litigation indefiniteness standard from the U.S. Patent and Trademark Office's (PTO) pre-issuance, examination indefiniteness standard. While the Federal Circuit declined to expressly address the PTO's indefiniteness standard in examination, the court affirmed the PTO's burden-shifting approach. Examination, however, is not the only context where the PTO evaluates indefiniteness. Under the Leahy-Smith America Invents Act (AIA), parties can raise indefiniteness challenges to issued patents in covered business method review (CBM) petitions and post-grant review (PGR) petitions. And upon institution of review, the Patent Trial and Appeal Board (PTAB) will consider whether the petitioner has shown, by a preponderance of the evidence, that the challenged claims are invalid under the instituted grounds, which may include indefiniteness under 35 U.S.C. §112(b). As the first PTAB Final Written Decisions considering indefiniteness arrive on appeal, the Federal Circuit will likely be asked to consider which indefiniteness standard applies—the Supreme Court's "reasonable certainty" standard, or the "lower threshold" standard applied to pending patent applications. In this article, Finnegan attorneys Erika H. Arner, Jason L. Romrell, J. Derek McCorquindale, and Daniel C. Cooley consider both standards and discuss which standard might apply to CBMs and PGRs.
Previously published in BNA's Patent, Trademark & Copyright Journal
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