The Supreme Court recently agreed to review the enablement standard for genus claims,[1] the first time the Court has considered 35 U.S.C. § 112 since evaluating the standard.
On November 4, the U.S. Supreme Court granted Amgen’s petition to review the “enablement requirement” of Section 112 of the Patent Act. See generally Amgen Inc., v. Sanofi, No. 21-757.
In Univ. of Mass v. L'Oréal USA, Inc., No. 21-1969 (Fed. Cir. June 13, 2022), the Court of Appeals for the Federal Circuit ("Federal Circuit") rejected the district court's claim constructions.
SUMMARY
On January 6, 2021, the United States Patent and Trademark Office (“USPTO”) published a Memorandum that changed the indefiniteness analysis under 35 U.S.C. §112 that the Patent Trial and Appeal Board (“PTAB”) applies in post-grant proceedings under the America Invents Act (“AIA”) so that it conforms with the standard that the district courts apply, i.e., based on the U.S. Supreme Court’s
Nautilus decision.
1 Before now, the PTAB and district courts have analyzed the indefiniteness of a claim using two different legal standards, which were generally referred to as the
Packard and
Nautilus standards, respectively.
2,3 The Memorandum was spurred by the USPTO’s 2018 decision to align the claim construction standard used in AIA post-grant proceedings with that of the district courts, thus shifting the PTAB from using the broadest reasonable interpretation (“BRI”) standard to the district courts’