In a memo issued on January 6, 2021, the U.S. Patent and Trademark Office (USPTO) told the Patent Trial and Appeal Board (PTAB) they must use the Nautilus standard for addressing indefiniteness, which was set by the Supreme Court of the United States in 2014. Previously, the PTAB used the In re Packard approach to indefiniteness in America Invents Act (AIA) reviews. Law360 interviewed Finnegan partner Josh Goldberg for his insight on the USPTO’s memo.
In theory, a claim is easier to invalidate under Packard than under Nautilus, but Josh said that is not always the case in practice. He said, “At the margins, there may be cases where the difference in standard potentially has an impact, but I think for the vast majority of cases ... this is really just going to be a simplification of the briefing since everyone now knows what the correct standard is.”
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