On January 6, 2021, the U.S. Patent and Trademark Office issued a memo confirming the Nautilus approach to indefiniteness should be used to address indefiniteness in America Invents Act (AIA) post-grant proceedings. Bloomberg Law contacted Josh Goldberg for his thoughts on the guidance.
There has been confusion about which approach to indefiniteness applies to PTAB trials. The approach used during patent examination follows the In Re Packard ruling, while district courts follow the Nautilus. At the PTAB, Josh said it is not uncommon for companies to make their arguments under both approaches. He said, “The fact that now they are clarifying that we should be using Nautilus is helpful because it will allow parties to know which argument they need to be focusing on.”
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