In In re Packard, the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decision upholding the rejection of Packard’s claims for indefiniteness. The per curiam decision approaches the issue from the perspective of the USPTO’s examination function, while steering clear of the issues raised in the Nautilus v. Biosig case pending before the Supreme Court. Judge Plager’s concurring opinion, which is twice as long, traces the history of “indefiniteness” jurisprudence, discusses the difference between pre-grant and post-issuance ”indefiniteness” issues, and acknowledges that the Supreme Court will be weighing in soon in the post-issuance context. Indeed, perhaps the most interesting aspect of this decision is its timing relative to Nautilis v. Biosig.

The Patent Application At Issue

The patent application at issue is Packard’s 12/004,324, directed to a “Coin Change Card.” Independent claim 28 reads as follows:

28. I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the card comprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

The Indefiniteness Issues

The examiner rejected the claims on a number of grounds, including indefiniteness, and the PTAB affirmed the rejections. Before the Federal Circuit, Mr. Packard argued that the PTAB should not have held the claims indefinite merely because “they ‘contain[ ] words or phrases whose meaning is unclear,’” but should have reversed the rejections because the claims were not “insolubly ambiguous.”

The Per Curiam Decision

The Federal Circuit appeal was heard by Judges O’Malley, Plager and Taranto. The per curiam decision frames the issue as follows:

This case raises an important question: what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims?

and notes that “[t]he parties point to no case in which we previously have addressed this question.”

The court cites the examination function of the USPTO, the importance of testing claims for “reasonable precision,” and the interactive nature of the examination process, and approves a burden-shifting approach to indefiniteness rejections:

It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b).

The court reasoned that it could reach this conclusion “without regard to the proper formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment of indefiniteness, a matter currently under review by the Supreme Court” in Nautilus v. Biosig.

Thus, the court holds:

We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.

Judge Plager’s Concurrence

Judge Plager states in the opening paragraphs of his concurring opinion that he wrote separately to address more directly Mr. Packard’s arguments and the “significant issues” he raised. given the relative timing of this decision and Nautilus v. Biosig, I can’t help but wonder if Judge Plager also wanted to explain his understanding of indefiniteness jurisprudence to the Supreme Court.

Judge Plager reviews Supreme Court and Federal Circuit case law, and finds support for three possible ways to approach claim construction and indefiniteness in issued patents:

(1) Give controlling weight to the policy of upholding the USPTO’s decision to issue a presumptively valid patent, with substantially less concern for the notice function of patents. Thus, find a possible meaning that preserves the validity of the patent claim, without particular regard for what competitors or the public might have understood, i.e., what would be understood by those skilled in the art involved at the time of the invention. (According to Judge Plager, this approach might embrace the “insolubly ambiguous” standard, if such a standard exists.)

(2) Give weight to the notice function of patents, while still recognizing the role of the presumption of validity. Thus, choose from among the available meanings the one that seems to best accord with what one of reasonable skill in the art would understand to be intended, and which the public, including competitors, would assume to be the correct reading. When there is more than one such understanding, as sometimes appears to be the case, this could lead to a preference for the understanding that preserves the validity of the patent claim.

(3) Give full weight to the importance of the notice function of patents, recognizing that it is the claim drafter/patentee who is ultimately responsible for problems created by ambiguous terms. When confronted with a patent claim that has several reasonable meanings for which the patent itself demonstrates no preference (and certainly true of an incoherent term), the result of this option would be a holding that an ambiguous term by definition fails to comply with the statutory requirements for claim drafting. Thus, if a member of the public in order to understand the patent claim must guess about the meaning of an ambiguous term, the claim would not be patentable and is otherwise invalid.

Having found that even the courts have not hewn to a single approach, Judge Plager finds nothing wrong with the USPTO’s even “lower threshold” for indefiniteness rejections applying the following standard articulated in Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I. 2008):

Namely, if one of ordinary skill in the art, after considering the information provided by the applicant including the written description, and after putting the disputed term in the context of the proposed patent, finds the claim to contain words or phrases whose meaning is unclear, then the examiner is to require the applicant to “more precisely define the metes and bounds of the claimed invention” by issuing an indefiniteness rejection. …. And on appeal to the Board, should the applicant fail or refuse to provide the needed clarification, the Board will apply the same interpretation requirement.

Judge Plager expressed his views that not only is this a permissible approach for the USPTO, it also serves important public policy goals by aiding the USPTO’s role of “ensuring the quality of patents and compliance with the statutory requirements” and addressing “[t]he problem of indefiniteness.”

The Interactive Examination Process

Most applicants address indefiniteness issues before the examiner, by amending the claims or explaining the terminology. It is rare to appeal an indefiniteness rejection to the PTAB, and apparently rarer still to pursue the issue to the Federal Circuit. Still, there are times when an examiner has found claims to be indefinite and the applicant disagrees, or is not able to make acceptable clarifying amendments because no other terminology is supported by the specification. Even if those cases, the Federal Circuit decision here does not appear to break much new ground, because the burden-shifting framework it supports is common to every issue that examiners raise. Examiners make rejections, applicants respond, and the process continues until agreement is reached on allowable claims, the applicant appeals to the PTAB, or the applicant gives up and abandons the application. What is important in this case is the reminder that the USPTO should raise only “well-grounded” indefiniteness rejections and require only “reasonable precision” from the claims.

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