USPTO Proposes a New Rule to Use Narrower Phillips Standard During Claim Construction in AIA Trial Proceedings

On May 9, 2018, the United States Patent and Trademark Office (USPTO) proposed to amend the current rules to change the claim construction standard used in America Invents Act (AIA) reviews and bring it in line with the standard used in district court and ITC proceedings. Under the amended rules, the Patent Trial and Appeal Board (PTAB) would no longer use the broadest reasonable interpretation (BRI) standard for claim construction, and instead would use the narrower Phillips standard. The proposed rules would apply to claim interpretations occurring in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patents proceedings.

The Board currently construes unexpired patent claims and proposed claims in AIA trial proceedings using the BRI standard, as directed by 37 CFR 42.100(b), 42.200(b), and 42.300(b). Each of these sections currently provides that “[a] claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” This standard differs from the Phillips standard used by district courts. Under the proposed changes to these sections, the PTAB will adopt the Phillips standard and construe claims “given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” given “the claim language itself, specification, and prosecution history.” Additionally, the USPTO proposes to amend the rules to add that the Board “will consider any prior claim construction determination” by a district court or the ITC “concerning a term of the involved claim” that is “timely made of record in an IPR, PGR, or CBM proceeding.”

The proposed rule changes aim to minimize differences between claim construction standards used in the various fora, which “could lead to greater uniformity and predictability of the patent grant” consistent with Director Iancu’s recently expressed views on improving the USPTO. The USPTO notes that there is a “high percentage of overlap” between patents at issue in AIA trial proceedings and district court litigation. Harmonizing the standards addresses the concern that “[b]ecause the BRI standard potentially reads on a broader universe of prior art than does the Phillips standard, a patent claim could be found unpatentable in an AIA trial on account of claim scope that the patent owner would not be able to assert in an infringement proceeding.”

“[A]ny proposed rule changes adopted in a final rule would be applied to all pending IPR, PGR, and CBM proceedings before PTAB.” The USPTO is seeking public comments on these proposed rule changes. The public comment period ends on July 9, 2018. Gibbons will continue to monitor changes to AIA trial proceedings under Director Iancu and provide periodic updates when applicable.

Tryn T. Stimart, a Director in the Gibbons Intellectual Property Department, and Jean E. Dassie, an Associate in the Gibbons Intellectual Property Department, authored this post.
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