January 5, 2021

The U.S. Patent & Trademark Office issued a Memorandum on January 6, 2021, to PTAB members on the standard to be used when assessing questions of indefiniteness in AIA post-grant proceedings.  So as to be consistent with claim construction standards now applied in AIA trials, questions of indefiniteness are to be analyzed under the approach used by district courts, as set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).  The Office believes that “eliminating the differences between indefiniteness approaches used in the district courts and before the Board in AIA post-grant proceedings will lead to greater uniformity and predictability, improve the integrity of the patent system, and help increase judicial efficiency.” Memo at 5.