Business
https://www.dbllawyers.com/waco-is-a-great-place-for-patent-owners/ Today, a lesson on patent indefiniteness. A recent ruling from the Federal Circuit has confirmed the Patent Trial and Appeals Board cannot find a patent indefinite, that an IPR and inter-parties review proceeding is limited to the scope of the petition. That's a big deal. Indefiniteness, defined by the United States Supreme Court in a case called Nautilus vs. Biosig Instruments basically held that a patent is indefinite if the language of the claims in the patent fails to inform somebody who's an ordinary skilled artisan, that is a person of ordinary skill in the art, with reasonable certainty about the scope of the invention. In other words, if somebody who is skilled in the art, somebody who's an expert in the field of whatever the patent's in, can't be informed about how much the claims cover, what the scope of the invention is, then that patent claim would be indefinite. It's been confirmed by the Federal Circuit, and the big takeaways here are that probably they'll institute fewer petitions against patents in the future, and probably, big takeaway for practitioners here, is that you may want to think twice about asserting indefiniteness, or rather challenging a patent that you might think is indefinite because the PTAP can't do that, and if you challenge a patent you think is indefinite at the PTAP, and your case is still pending in district court, and you walk away with a loss at the Patent Trial and Appeals Board, that may weigh on you in the district court level. So you may want to save those challenges for the district court.