The courts have long stated that one goal of patent law is to provide certainty to both inventors and the public regarding the law that is applied in determining the metes and bounds of a patent claim. Patent claims that are ambiguous and vague in scope leave the public in doubt as to what is protected by the patent and is considered to exert a chilling effect on further innovation. What is one sure fire way to destroy certainty? Having two differing legal standards applied to claim interpretation seem to fit the bill. This is exactly the situation encountered when patent claims are evaluated for indefiniteness under 35 USC §112(b) by courts in the context of patent litigation and the Patent Trial and Appeal Board (PTAB) in pre- and post-issuance proceedings.

Differing Standards for Indefiniteness

District courts and the CAFC apply the now familiar standard for claim indefiniteness under Nautilus as set forth by the Supreme Court, which states a claim is invalid as indefinite if the claim “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 replaced the prior test for indefiniteness which required a claim to be “insolubly ambiguous.” The PTAB however has stated that it is not bound by the USSC’s decision in Nautilus. The PTAB standards for determining indefiniteness are whether a claim “contains words or phrases whose meaning is unclear” as set forth in In re Packard or “when a claim is amenable to two or more plausible constructions” as discussed in Ex Parte Miyazaki.

The PTAB explained in Ex Parte Miyazaki that in pre-issuance proceedings the board is justified in using a lower threshold “because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent.”

The same standard has been applied in post-grant proceedings in Google, Inc. v. SimpleAir, Inc., where the board stated the basis for applying the lower threshold for indefiniteness in pre-issuance proceedings “stems from two factors: (1) the broadest reasonable interpretation claim construction standard; and (2) the lack of a presumption of validity before the Office.” As the board found the same two factors apply to post-grant proceedings, the lower standard for indefiniteness was proper. This approach was also confirmed in Tinnus Enterprises, LLV v. Telebrands Enterprises, where the board stated “We do not understand Nautilus, however, to mandate the Board’s approach to indefiniteness in patent examination or reexamination matters or in AIA proceedings, in which the claims are interpreted under the broadest reasonable interpretation standard, and an opportunity to amend the claims is afforded.”

As we discussed previously, these differing standards can result in different outcomes in the CAFC and the PTAB (Tinnus Enterprises, LLV v. Telebrands Enterprises).

Ex Parte McAward Confirms PTAB Approach in Pre-Issuance Proceedings

The PTAB issued a precedential decision, a rare occurrence, in Ex parte McAward on August 25, 2017 (link). The decision serves as clear confirmation that the PTAB will continue to use the lower threshold for indefiniteness as set forth in In re Packard and Ex Parte Miyazaki in pre-issuance proceedings. However, the board’s decision expressly limits the holding to pre-issuance proceedings, leaving some doubt as to the continued application of the lower standard to post-grant proceedings. Specifically, the board stated “We do not address, in this decision, the approach to indefiniteness that the Office follows in post-grant trial proceedings under the America Invents Act.” Therefore, until a precedential decision from the board addresses the application of the lower standard in post-grant proceedings, the proper standard for the evaluation of claim indefiniteness for post-grant proceedings is still in some doubt.

While the same factors relied on by the PTAB in applying the lower threshold are arguably present in post-issuance proceedings, the issue of how freely claim amendments are entered in post-grant proceedings has recently been called into question. In In re Aqua Products (CAFC, 2015-1177), the CAFC granted en banc review in December 2016 to determine if the board’s approach to claim amendments during post-grant proceedings is too limiting. While a decision still has not been handed down, if it is found that patent owners do not have the opportunity to freely amend their claims (as required by the logic of Google, Inc. v. SimpleAir, Inc. and Tinnus Enterprises, LLV v. Telebrands Enterprises) the PTAB’s logic in applying the lower standard is called into question, arguing that the proper standard for evaluating claim indefiniteness in post-grant proceedings should in fact be the Nautilus standard as applied by the district courts and the CAFC.

Points to Consider

For the present, it should be expected that the PTAB will continue with its current approach to evaluating claim indefiniteness in both pre- and post-issuance proceedings. As a result, it will remain the case that patent claims will be easier to invalidate on indefiniteness grounds in front of the board as compared to district court. While the situation may change with respect to post-grant proceedings, it is unlikely to change with respect to pre-issuance proceedings.

Therefore, those wishing to challenge claims on the ground of indefiniteness should carefully consider their options and consider taking advantage of the lower threshold available in front of the board. Likewise, patent applicants and owners should evaluate their cases for vulnerability under the PTAB’s current standards.