Holding

In Voltserver Inc. v. Cisco Technology, PGR2021-00055, Paper 11 (PTAB Aug. 19, 2021), the Patent Trial and Appeal Board (“the Board”) denied institution of Voltserver’s post-grant review (PGR) petition challenging claims in U.S. Pat. No. 10,735,105 (“the ’105 patent). According to the Board, Voltserver failed to show the challenged claims were invalid as indefinite and obvious.   

Background

The ’105 patent relates to a communications network that transmits power from a central network device to powered network devices. Testing to identify faults in the system uses high voltage pulses and a low voltage mode. The claim terms the petition alleged to be indefinite were “high voltage” and “low voltage.” According to the petition, without any objective boundary provided in the specification, the public cannot know the boundaries of the claimed subject matter. In addition, the petition argued that the use of “said testing” in a claim that previously recited two separate and distinct testing steps rendered the claim indefinite.  

The petition also asserted that certain claims were obvious.

Board Decision

The Board found sufficient guidance in the specification to provide “reasonable certainty” to meet the requirement for definiteness in 35 U.S.C. § 112(b).  In particular, several examples describe low voltage as being less than or equal to 60 volts, which the Examiner quoted in the prosecution history. Id. at *11. The Board accepted the patent owner’s argument that one example showing low voltage of greater than 60 volts was a “minor typographical error that a person of ordinary skill in the art would have recognized.” Id. at *10.  The Board concluded that:

“[L]ow voltage” as claimed, when read in light of the specification and the prosecution history, provides an objective boundary for those skilled in the art as a voltage less than or equal to 60 volts.

Id. at *11-12.

With respect to the term “high voltage,” the Board found that “the prosecution history confirms what Applicant intended  ̶  and what the Examiner understood  ̶  to be the recited ‘high voltage.’” Id. at *12.  In response to a rejection for lack of written description, the patent owner amended its claims to recite that the “high voltage” comprises at least 250 volts. Id. This “would have informed a skilled artisan, with reasonable certainty, that ‘high voltage’ as claimed is a relative term that means a voltage greater than or equal to 250 volts.” Id. at *13.

The Board further agreed with the patent owner that “said testing,” which previously recited two separate and distinct testing steps, could refer to either testing step earlier recited. Id. at *14. In particular, the Board noted that “we see no reason why referring to either or both of two possibilities makes the scope of the claim unclear.” Id. (emphasis added).

With respect to obviousness, the Board found that the petitioner had not explained how the references taught or suggested the claimed subject matter. Id. at *19-20.

Takeaways

When words of degree are used in patent claims, issues may arise in determining whether a person of ordinary skill in the art could understand with “reasonable certainty” how the recited claim would be infringed. Practitioners are reminded by the Voltserver opinion that relative terms must be treated as carefully as technical terms of art. The principle of defining and using the terms consistently applies to relative terms. Careful drafting initially may avoid indefiniteness rejections and/or post-issuance challenges.

The Supreme Court standard for definiteness, “reasonable certainty,” was set forth in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (U.S. June 2, 2014). On Jan 6, 2021, the USPTO issued a memo formally adopting the Nautilus standard for analyzing indefiniteness in AIA post-grant proceedings.