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 the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court in Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This change in standard is beneficial to patent owners.

Pursuant to 35 U.S.C. § 112(b), the claims of a patent or patent application need to “particularly point[] out and distinctly claim[] the subject matter … regard[ed] as the invention.” If the claims do not meet that threshold, they are considered indefinite. The USPTO conducts an indefinite assessment during examination, including ex parte appeals, reexaminations, and reissue proceedings, as well as during AIA trials.

In AIA trials, indefiniteness can be a ground for unpatentability only in post grant reviews and covered business method reviews, not in inter partes reviews. Nevertheless, a definite assessment is conducted as part of claim construction in all AIA trials, even in inter partes reviews.

Up until the issuance of the memorandum, the USPTO assessed indefiniteness based on whether the meaning of a claim term is unclear: “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam). The Federal Circuit’s Packard decision endorsed the USPTO’s application of this definiteness standard. Id. Even though Packard was in the context of examination, the USPTO has used this standard agencywide.

The same year as Packard, the Supreme Court held that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 572 U.S. 898 at 901. The USPTO has taken the position that because claims under examination are construed under the broadest reasonable interpretation (BRI) standard and because claims under examination can be amended, it can continue to use the standard endorsed in In re Packard. See e.g., M.P.E.P. 2173.02. Accordingly, the USPTO has not relied on the Nautilus standard during examination and in AIA trials. As a result, it is possible that the claim construction in an AIA trial is different from the claim construction by a district court and/or the International Trade Commission (ITC).

However, effective Nov. 13, 2018, the USPTO changed the claim construction standard in AIA trials from the BRI standard to the same standard used in litigation. See 37 C.F.R. §§ 42.100(b) and 42.200(b). This change in the claim construction standard undermined the USPTO’s justification for using the Packard indefiniteness standard. To no one’s surprise, according to the memorandum, since the time of the change in the claim construction standard, “the Board has noted confusion as to whether Nautilus or Packard applies” and parties have been arguing both standards.

As a result of the memorandum, the PTAB must assess indefiniteness using the reasonable certainty standard. While the memorandum does not indicate an effective date, it appears that this change in standard is applicable to all pending AIA trials. This change, designed to align the PTAB’s claim construction with those of courts and/or the ITC, is beneficial to patent owners; arguably the reasonable uncertainty standard in Nautilus makes it more difficult to find a claim indefinite. Conversely, the change makes it more difficult to challenge the patentability of a claim on indefiniteness grounds. It will also make it more difficult to challenge the patentability of any substitute claim proposed by a patent owner in a motion to amend.