Decision Indirectly Highlights Value of Post-Grant Challenges

Yesterday, the Supreme Court decided that the Federal Circuit’s “insolubly ambiguous” framework for analyzing indefiniteness was, well…. indefinite.  In Nautilus Inc. v Biosig Instruments, Inc., the court found that “. . .the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning § 112, ¶2’s requirement.  We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass” (here). In reversing the decision of the CAFC, the case was remanded with instructions to consider a re-calibrated standard. That is, whether the claims when read in light of the specification and prosecution history fail to inform, with reasonable certainty, the scope of the claims to one of skill in the relevant art. The new test, as discussed at length in the decision, emphasizes a more fact intensive analysis.

As pointed out in footnote 10 of the decision, the parties dispute over the proper weight to be accorded the underlying proofs (i.e., clear and convincing, or not), and the degree of deference to a previous post-grant determination of the USPTO, were left for another day—That day may be just around the corner.

The patent, in this dispute (5,337,753) was reexamined at the USPTO in 2010. Due to its vintage, and the unavailability of the more robust AIA challenge options at the time, ex parte patent reexamination was the only option. While 112 challenges are not possible in patent reexamination outside of very limited circumstances, the issue was at least tangentially considered.  In fact, a declaration of the inventor figured prominently in the briefing on indefiniteness to the courts.  How the outcome of that patent reexamination proceeding will be weighed on remand remains to be seen. That said, the new AIA options, Post Grant Review (PGR), and Covered Business Method Review (CBM) will consider 112 grounds of unpatentability. Did Nautilus just make those options all the more attractive?

Aside from whether or not the courts apply a clear and convincing standard to 112 proofs (likely in my opinion), there is still the recent CAFC decision In re Packard. This decision suggests that the USPTO may apply a different, more liberal legal framework than the courts (See also Ex parte Miyazaki). In other words, patent challengers wishing to exploit a 112 ¶ 2 deficiency may find a USPTO post-grant proceeding more challenger friendly from both an evidentiary perspective (preponderance of evidence) and legal perspective.