Indefiniteness in AIA post-grant proceedings memorandum

The memorandum directs the Board to analyze indefiniteness under 35 U.S.C. § 112(b) in AIA post-grant proceedings using the Supreme Court's Nautilus approach, the approach used by district courts, rather than the Packard approach. It confirms Nautilus as the correct approach because the 2018 rule changes aligned the Board's claim construction standard with that of district courts. Petitioners and patent owners in AIA post-grant proceedings now argue indefiniteness under one standard, Nautilus, so there is no need to brief both Nautilus and Packard, as some parties had done. A claim is indefinite under Nautilus if, read in light of the specification and prosecution history, it fails to inform those skilled in the art about the scope of the invention with reasonable certainty. The memorandum rests on the Director's authority under 35 U.S.C. § 3(a)(2)(A), SOP2, and the 2018 revisions to 37 C.F.R. §§ 42.100(b) and 42.200(b). It states that it does not change the approach to claim construction or indefiniteness in examination, appeals from examination, reexamination, or reissue, where Packard and McAward continue to govern. WHAT IT DOES: Directs that the Board shall follow Nautilus in AIA post-grant proceedings. Under Nautilus, 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 the invention with reasonable certainty. The memorandum explains that indefiniteness is generally treated as part of claim construction, so it should align with the district court approach now that the claim construction standard does. It also cites the goal of consistency and efficiency among coordinate branches of government deciding similar issues in co-pending proceedings. WHO AND WHEN: Issued January 6, 2021 to members of the Patent Trial and Appeal Board. It governs AIA post-grant proceedings (IPR, PGR, CBM), including challenges to original claims in a PGR or CBM and to substitute claims in any proceeding. It does not address claim construction or indefiniteness outside AIA post-grant proceedings. The document sets no separate effective date beyond its issuance and states that it is binding agency guidance for the Board. KEY QUOTE: "This memorandum confirms, therefore, that Nautilus is the correct approach for analyzing indefiniteness in AIA post-grant proceedings." (p. 5) EARLIER GUIDANCE AFFECTED: Follows the 2018 revisions to 37 C.F.R. §§ 42.100(b) and 42.200(b) (83 FR 51340), which moved the claim construction standard from broadest reasonable construction to the district court standard. It resolves the Nautilus versus Packard confusion the Board noted in BASF Corp. v. Ingevity South Carolina, LLC and Dong Guan Leafy Windoware Co. v. Anli Spring Co. It leaves Ex parte McAward (Section I.B. designated precedential) and In re Packard in place for examination, which includes appeals from original examination, reexamination, and reissue applications. The document does not name any rescinded memorandum. PRACTICE TIP: Brief and argue indefiniteness in IPR, PGR and CBM proceedings only under the Nautilus reasonable certainty standard, measured against the specification and prosecution history. Do not rely on Packard's words-or-phrases-whose-meaning-is-unclear test, or on the prima facie case framework from McAward, in these trials. Issued by Andrei Iancu, Under Secretary and Director; Andrew Hirshfeld, Commissioner for Patents; Scott R. Boalick, Chief Administrative Patent Judge.