Indefiniteness Standard Applicable in PGRs: Reasonably Certain or Clear?, PTAB Litigation Blog

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Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s claims, viewed in light of the specification and prosecution history, to inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The PTAB applies the standard articulated in Packard, which provides that "a claim is indefinite when it contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The Nautilus opinion specifically addressed issued patent claims (although the Supreme Court did not expressly limit its holding to that context), while the Packard opinion (which pre-dates Nautilus) addressed pre-issuance claims. In post-grant review ("PGR") proceedings, where the PTAB reviews issued claims, which standard applies? This issue was before the Federal Circuit in Tinnus Enterprises, LLC v. Telebrands Corp., No. 2017-1726 (Fed. Cir. May 30, 2018).

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