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Claim Construction at the PTAB: Harmonization
October 11, 2018

By Jonathan M. Dunsay and Michael F. Snyder

In a step toward consistent interpretation of patent claims before federal courts and the Patent Trial and Appeal Board (PTAB) during post-grant proceedings, today the United States Patent and Trademark Office (“USPTO”) published a final rule revising the claim construction standard used during proceedings established by the Leahy-Smith American Invents Act (“AIA”).

Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). Before this change, the PTAB applied the “broadest reasonable interpretation” (“BRI”) standard when interpreting patent claims for inter partes review (“IPR”), post-grant review (“PGR”), and the transitional program for covered business method patents (“CBM”) proceedings (“AIA proceedings”).

Under the PTAB’s final rule, the PTAB will apply the same claim construction standard used by federal courts to construe patent claims in a federal patent lawsuit, as articulated in the seminal case of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 83 Fed. Reg. at 51,341. The Phillips standard construes claims in view of the patent specification, and takes into account both intrinsic evidence (the patent specification, drawings, claims, and the prosecution history), as well as extrinsic evidence (e.g., dictionary definitions, journal articles, expert testimony) in construing patent claims. Applying the Phillips standard can result in claim interpretations that are more narrow than the BRI standard, which could potentially preserve the validity claims in view of prior art.

The Phillips standard will be applied by the PTAB to evaluate unexpired patent claims and substitute claims in motions to amend. 83 Fed. Reg. at 51,341. Moreover, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (“ITC”), if that prior claim construction is timely made of record in an AIA proceeding. Id. at 51,340. The rule is effective on November 13, 2018, and will apply to all AIA proceedings after that date. Id.

The USPTO undertook this action using its rule making power instead of waiting for further legislation from Congress, based on almost six years of experience and feedback concerning AIA proceedings, and after receiving 374 comments on the proposed rule. 83 Fed. Reg. at 51,341 (citing the Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016)). The majority of comments supported the rule change. Id.

As federal courts do, under the Phillips standard, the PTAB will construe patent claim terms in accordance with the ordinary and customary meaning of such terms as understood by one of ordinary skill in the art. Id. at 51,343. By using the same standard, inconsistencies between federal courts and the PTAB will be reduced “and this allows, among other things, the patent owner to understand the scope of the claims and more effectively file motions to amend.” Id. Further, if the same patents in an AIA proceeding are involved in a federal court proceeding, judicial efficiency will be increased and arguments related to different standards across fora will be eliminated. Id. at 51,344. Moreover, both patent owners and petitioners should see cost reductions “by reducing wasted effort in conducting duplicative efforts in construing claims.” Id.

After implementation, federal courts may reduce their heavy workload by adopting PTAB claim constructions instead of engaging in their own claim construction proceedings. Similarly, the PTAB can increase its efficiency by adopting federal court claim constructions, should they be made of record. Further, there may be a reduction in the number of PTAB petitions granted and the number of patent claims found invalid in granted petitions, as well as an increase in claim amendments allowed by the PTAB due to the narrower Phillips standard. In the near term, there may be an increase in petitions challenging patents filed at the PTAB as petitioners rush to take advantage of the BRI standards before the November 13 effective date of the new rules. Ultimately, patent practitioners, litigators and owners will no longer have to balance two different standards when a patent is involved in both a federal patent lawsuit and an AIA proceeding.