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ARTICLE · 12 JANUARY 2021

USPTO Issues Memorandum Aligning Indefiniteness Standard With District Court

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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On January 6, 2021, the U.S. Patent & Trademark Office issued a memorandum to the Patent Trial and Appeal Board, requiring that, in post-grant trial proceedings...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Amanda Murphy
Amanda Murphy
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On January 6, 2021, the U.S. Patent & Trademark Office issued a memorandum to the Patent Trial and Appeal Board, requiring that, in post-grant trial proceedings, the Board must follow the same indefiniteness standard used in district courts.  The Board must now analyze indefiniteness in post-grant trial proceedings under the standard set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)—that is, a claim is indefinite if, read in light of the specification and the prosecution history, it fails to inform those skilled in the art about the scope of invention with reasonable certainty.  Id. at 901.

For many years, the Office and Board had used a different indefiniteness standard, approved by the Federal Circuit in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) (per curiam).  Under the Packard standard, a claim was indefinite “when it contains words or phrases whose meaning is unclear.”  Id. at 1310, 1314. 

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