The CAFC tackles indefiniteness in In re Packard

The CAFC panel of Judges O'Malley, Plager, and Taranto issued a per curium presidential opinion in In re Packard , with an interesting concurring opinion by Judge Plager.

The major issue was the conflicting standards for indefiniteness (old law, 112 P 2), with the Appellant Packard arguing that the Board had to meet the "insolubly ambiguous" standard to his claims, which he argued he would have passed.

The "majority" did not resolve the legal standard issue as to indefiniteness, but may have created a new kind of "waiver" problem for appellants. For the majority:


Given the role of the applicant in the process, it is a
reasonable implementation of the examination responsibility,
as applied to § 112(b), for the USPTO, upon providing
the applicant a well-grounded identification of clarity
problems, to demand persuasive responses on pain of
rejection. That approach decides this case, because Mr.
Packard did not offer a satisfactory response to wellgrounded
indefiniteness rejections in this case.

(...)

Mr. Packard did not respond adequately to this group
of claim language problems. He ignored some entirely.
As to others, he offered brief explanations of what he
thought certain material in the written description and
figures showed. But he did not focus on the claimlanguage
difficulties, nor did he propose clarifying changes
or show why, on close scrutiny, the existing claim
language really was as reasonably precise as the circumstances
permitted.

(...)

Because Mr. Packard had an opportunity to bring
clarity to his claim language, we affirm the Board’s findings
as to indefiniteness under the MPEP standard
properly applied by the USPTO, the standard which we
have here approved.



Judge Plager's concurring opinion begins


I join the per curiam opinion of the court, and fully
support the conclusion stated therein. While the per
curiam opinion reaches the right result and, as far as it
goes, for the right reasons, it decides the case on grounds
not argued by either party.



The reason for Judge Plager's writing:


I write separately because I am of the view that a petitioner
to this court seeking reversal of a decision is
entitled to an explanation of why the arguments on which
he relied for his appeal did not prevail. I also believe that
the significant issues raised by Mr. Packard deserve to be
addressed directly.



The appellant still loses under Judge Plager's view:


In my view (and that of the per curiam court), it is
within the authority of the USPTO to so interpret the
applicable standard. Further, it is my view that, as a
policy matter, this court should support the USPTO in so
doing. To begin with, I find nothing in the statutes that
precludes the USPTO from adopting such guidance for the
examiners and the Board.17 Beyond that, no precedent of
this court or of the Supreme Court addressing patent
claim construction issues suggests that such a position on
the part of the USPTO would be beyond its authority in
the proper administration of the governing statutes.



As a separate issue, note Microsoft v. DataTern: Judge Rader’s Dissent Withdrawn

cite for Packard case

751 F.3d 1307; 2014 U.S. App. LEXIS 8448; 110 U.S.P.Q.2D (BNA) 1785

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Plager, Circuit Judge, concurring.

I join the per curiam opinion of the court, and fully support the conclusion stated therein. While the per curiam opinion reaches the right result and, as far as it goes, for the right reasons, it decides the case on grounds not argued by either party.

I write separately because I am of the view that a petitioner to this court seeking reversal of a decision is entitled to an explanation of why the arguments on which he relied for his appeal did not prevail. I also believe that the significant issues raised by Mr. Packard deserve to be addressed directly.

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