PTAB Will Use Nautilus Approach to Indefiniteness for Post-Grant Proceedings

“The USPTO reasoned that this approach to indefiniteness will ‘promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings.’”

Last week, the United States Patent and Trademark Office (USPTO) issued binding indefiniteness guidance in a memorandum from Director Andrei Iancu that addresses confusion about which indefiniteness standard applies in post-grant proceedings: the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) or in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the memorandum confirms that the standard in Nautilus is the correct approach for analyzing indefiniteness in America Invents Act (AIA) post-grant proceedings.

Two Standards

Under Nautilus, a claim of a patent challenged for indefiniteness is unpatentable for indefiniteness if the claim, read in light of the specification delineating the patent, and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Id. at 901 (emphasis added). It is important to note that the memorandum’s guidance only applies to AIA post-grant proceedings and does not discuss claim construction or indefiniteness outside of that context.

Previously, the courts battled with reconciling the standard set forth in Packard, wherein “[a] claim is indefinite when it contains words or phrases whose meaning is unclear” Id. at 1310, 1314. The memorandum notes that, at the same time, all proceedings also used the broadest reasonable interpretation approach to claim construction. After Nautilus, the Office reaffirmed that the Packard standard would be used for examination, reexamination, and reissue applications. See Ex parte McAward, Appeal 2015-006416, 2017 WL 3947829, at *5 (PTAB Aug. 25, 2017). The Patent Trial and Appeal Board (PTAB) noted that such a standard does not apply in post-grant proceedings because “[t]he Office’s application of the broadest reasonable interpretation for pending claims and its employment of an interactive process for resolving ambiguities during prosecution naturally results in an approach to resolving questions of compliance with Section 112 that fundamentally differs from a court’s approach to indefiniteness.” Id. At *4 (emphasis in original). In contrast, for example, in inter partes reviews—by far the most frequent AIA proceeding—parties challenging patents are not allowed to argue that a patent is indefinite, but proposed amended claims can be rejected by the Board as indefinite.

The memorandum cites the Board’s confusion as to whether Nautilus or Packard applies in several cases. Particularly, the Office cites BASF Corp., v. Ingevity South Carolina, LLC, PGR2020-00037, Paper 19 at 12 (PTAB Sept. 10, 2020) which cites both approaches and notes that the Federal Circuit declined previously to decide which one applies to the post-grant review process, and Dong Guan Leafy Windoware Co. Ltd., v. Anli Spring Co., PGR2020-00001, Paper 7 at 22—23 (PTAB Apr. 20, 2020) wherein the Board noted that the issue of whether which standard applies remains “open.”

Toward Consistency, Efficiency

The Office found its answer to the Packard or Nautilus question in 2018 rules changes. As a result of these rule changes that align the Board’s approach to claim construction to that used by district courts—i.e., from the broadest reasonable interpretation to the standard articulated in Phillips v. AWH Corp., which said claims should be construed according to the “ordinary and customary meaning of such claim as understood by one of ordinary skill in the art” as well as the prosecution history of the patent—and because indefiniteness questions are generally part of the claim construction process, the Board’s approach to analyzing indefiniteness in AIA post-grant proceedings should likewise align with the approach used by district courts, as set forth in Nautilus.

The USPTO reasoned that this approach will “promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings.”

The change in standards is a part of a broader effort by the USPTO to ensure that results at the PTAB are more in line with the district courts.

The memorandum concludes by asserting that the change “will lead to greater uniformity and predictability, improve the integrity of the patent system and help increase judicial efficiency.”



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Join the Discussion

8 comments so far.

  • [Avatar for Anon]
    January 13, 2021 02:43 pm


    You – yet again – see items that are phantoms. US practice is not a “peek over the fence at the EPO and copy them” thing.

    And for good reason (think Sovereign choice).

    You might need medical attention for that strained shoulder coming from you patting yourself on the back.

  • [Avatar for MaxDrei]
    January 13, 2021 01:30 pm

    Thanks, Josh. For me, your comment brings light.

    It also reminds me of the position under the EPC, where the positions on definiteness pre- and post-grant could not be further apart.

    Mr Iancu spent time in Europe last year. He will have grasped that i) pre-grant, the EPO is ruthlessly rigorous about any perceived lack of clarity in a pending claim because ii) the 1973-written EPC excludes as a ground of attack on an issued claim any inadequacy of clarity.

    Manifestly, the 1973 EPC statutory scheme on clarity works well. The courts hardly ever have a problem to construe a duly issued claim. And if they do, in any one case, it will not help the patent owner, the author of their own misfortune. Somebody inside the USPTO has now noticed.

  • [Avatar for Josh Malone]
    Josh Malone
    January 13, 2021 12:14 pm

    Packard has nothing to do with issued patents. Nautilus is the standard for issued patents. The memo simply affirms that the PTAB panels will obey the Supreme Court going forward. This is addressed by the Federal Circuit in Tinnus v. Telebrands.

    In Packard, which pre-dates Nautilus, we addressed indefiniteness in a different context. There, we resolved the limited question of “what standard for indefiniteness should the [PTO] apply to pre-issuance claims[.]” We held that an examiner may properly reject a pending claim as indefinite if it “contains words or phrases whose meaning is unclear.” We based our holding, in part, on the PTO’s examination function “to ensure compliance with the statutory criteria” during the pre-issuance process, and the “substantive interaction” that occurs between the examiner and the applicant during prosecution. The PTO continues to apply this standard today for pre-issuance assessment of indefiniteness.

    We expressly acknowledged in Packard that, at that time, the Supreme Court was reviewing in Nautilus the question of what indefiniteness standard should apply to issued patents; we therefore decided the question before us in Packard “without regard to the proper formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment of indefiniteness[.]”

  • [Avatar for Anon]
    January 13, 2021 09:14 am

    Packard is a disastrous mess – no matter how clear you think it may have been.

    It invokes a standard that CAN NOT be met (under any attorney’s ability to use words) – because of the very nature of ANY human language.

  • [Avatar for Jonathan R Stroud]
    Jonathan R Stroud
    January 12, 2021 07:17 pm

    I’m not advocating for either standard, but this conflicts with Federal Circuit precedent. Packard was per curiam, and clear.

  • [Avatar for Anon]
    January 12, 2021 11:49 am

    There is an (evident) logical problem — even as the aim may be worthwhile.

    The problem is that the administrative agency process has revoked the presumption of validity AT the institution decision point.

    It is at that point, with the item in question having been brought back into the purview of the administrative agency that the very nature and character of the property has been altered (the property no longer contains all the sticks in the bundle of property rights).

    This elephant in the room points to a fallacy PRESUMED – that what happens in the Article III realm to a piece of property with all sticks intact should have “greater uniformity.”

    You are no longer (truly) comparing apples to apples at the point of the institution decision. Clarity in logic should be maintained.

  • [Avatar for __tr__]
    January 12, 2021 10:55 am

    Will be interesting to see if this memo holds up if/when this standard is ever challenged at the Federal Circuit. How dare they give inventors a leg up at the PDS.

  • [Avatar for MaxDrei]
    January 12, 2021 09:21 am

    Reminds me of the difficulties encountered whenever a jurisdiction tries to adjudicate two different standards of obviousness. They are insurmountable.

    Example: Germany. One standard for full 20 year patents. Another (supposedly lower) for 10 year term “petty patents”. Unsustainable.

    It’s a binary issue, isn’t it? Obvious Y/N. Indefinite Y/N.

    Or, to put it another way, it’s unclear, is it not, what “unclear” means.

    Come to think of it, clarity is an attribute of a claim that approaches 100% asymptotically. There never was a claim that was completely devoid of any degree whatsoever of unclarity.

    In this way, clarity (or definiteness, if you will) differs qualitatively from all other attributes of patentability.