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USPTO Proposed Rule Change to Adopt the Same Standard for Interpreting Claims in AIA Trials as the US District Courts and ITC

May 10, 2018
Post by Xiaohong Liu, Ph.D.

The big news of this week in the U.S. patent world is the publication of the Notice of Proposed Rule Making (NPRM) by the U.S. Patent & Trademark Office (USPTO) on May 9, 2018, for “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board (PTAB)".

The USPTO proposes changes to the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and for covered business method patents (“CBM”) proceedings before the PTAB. If approved, the  proposal would replace the broadest reasonable interpretation (“BRI”) standard for construing patent claims and proposed claims in these proceedings with a standard that is the same as in federal district courts and International Trade Commission (“ITC”) proceedings. The USPTO also proposes to amend the rules to consider any prior claim construction determination concernin in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding.

Specifically, USPTO proposes to replace 37 CFR 42.100(b), 42.200(b), and 42.300(b), which currently state “[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”, which were established about 5 years ago and held to be valid in the recent Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) decision by the Supreme Court of the United States.

The BRI standard is used in regular patent prosecution and ex parte reexamination. However, the BRI standard for AIA trials is different from the standard used in federal district courts and the ITC, which construes patent claims in accordance with the principles that the United States Court of Appeals for the Federal Circuit articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The USPTO proposal adopts the Phillips standard for interpreting claims in an expired patent. Under the Phillips standard, words of a claim are generally given their ordinary and customary meaning.

According to the USPTO, the rule changes could “lead to greater uniformity and predictability of the patent grant” and “help increase judicial efficiency overall”, since “one study found that 86.8% of patents at issue in AIA trial proceedings also have been the subject of litigation in the federal courts". The change “also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings”.

Many would dispute that the two standards are very different in practice. However, many would agree that the proposed change would prevent one to use AIA trials before PTAB as a second chance to invalidate a claim, rather than as an alternative proceedings to civil trials in U.S. district courts. Many regard this change as the first important step for improving the U.S. patent system under the leadership of new Director Andrei Iancu.

As to any rule change notice, anyone wishing to submit comments should submit comments to ptabnpr2018@uspto.gov before July 9, 2018, 60 days from the official publication of this rule change notice.


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