Pre-Issuance vs. Post Issuance…PTAB Does Both

Yesterday, the CAFC explored the proper standard for a USPTO indefiniteness analysis in In re Packard (here). Given that the Supreme Court has taken up the other side of this debate in Nautilus v, Biosig Instruments Inc., namely, the proper standard for a district court indefiniteness analysis, the Court’s holding was very delicately crafted. In affirming the USPTO’s rejection under 35 U.S.C. § 112(b) the Court found the examiner showing under 112 (which is based on a requirement of clarity in claim drafting) demanded a persuasive rebuttal from the patentee. In the eyes of the Court, the patentee failed to meet the rebuttal burden, so the indefiniteness rejection was affirmed.

The concurring opinion went a step further and found that the USPTO standard of “clarity” was an even lower threshold than that debated in Nautilus. (i.e., “insolubly ambiguous” test vs. adopting an interpretation that comports with the understanding of one of skill in the art). This lowermost standard was endorsed by the concurring opinion in deference to the expert agency and their role in protecting the public notice function of patents.

Packard presents a clear distinction between the “pre-issuance” role of the USPTO relative to the “post-issuance” role of the courts. However, the vast majority of appeals headed to the CAFC in the years ahead will be post-issuance patent challenges lodged with the USPTO. What does In re Packard mean for post-grant patent practice at the Patent Trial & Appeal Board (PTAB)?

In distinguishing between the 112(b) standards used in pre-issuance vs post-issuance disputes, the concurring opinion explains:

[A]s a legal matter the USPTO does not have to deal with the presumption of validity the statutes grant to post-issuance patents—sometimes said to hinder [a more liberal test] by courts. Furthermore, unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination, and the USPTO does not rely on it for interpreting claims.

The fact that this court has not yet seen fit to apply the same interpretive policy option to post-issuance cases as the USPTO wishes to apply to pre-issuance cases is no reason why the USPTO, given its unique and central role in the patenting process, should not be able to apply it in dealing with pre-issuance patent applications.

Clearly, the Court was referring to the prosecution of applications before patent examiners here. Still the presumption of validity is likewise absent from post-grant patent proceedings. And, the Court has recently made clear in Tempo Lighting that prosecution history is a viable tool in post grant patent proceedings (presumably, if it is part of the closed patent application record). While indefiniteness challenges are not permitted for original claims in patent reexamination or Inter Partes Review (IPR), such is not the case for patent reissue, supplemental examination, Post Grant Review (PGR) and Covered Business Method (CBM) patent challengers.

What standard does Packard dictate for these “post-issuance” challenges?