On October 11, 2018, the United States Patent and Trademark Office ("USPTO'') issued revised rules for claim construction.
The rules will take effect on November 13, 2018. The new rules mandate that the claim construction standard for interpreting claims in inter partes review ("IPR"), post-grant review ("PGR''), and the transitional program for covered business method patents ("CBM"') proceedings (collectively "AIA proceedings") before the Patent Trial and Appeal Board (PTAB") shall now be the same as the standard used to construe patent claims in a civil action in federal district court.
Until now, the PTAB has construed claims in IPR, PGR and CBM proceedings using the same "broadest reasonable interpretation" (BRI) standard employed during the examination process in the USPTO, which is different from the claim interpretation standard employed in federal courts. Thus, before this rule change, claims could be construed in federal court using one standard and in AIA proceedings using a different standard. Starting November 13, 2018, the PTAB will apply the same standard applied in federal courts to construe patent claims and will consider claim construction findings from litigation in construing claims in AIA proceedings. This may increase the likelihood, but not guarantee, consistent outcomes across proceedings.
As noted above, the BRI rule used to construe claims in most AIA proceedings is also used during prosecution of a patent application in the USPTO. BRI does not mean "broadest possible interpretation." Rather, the BRI standard requires that an interpretation of a claim term must be consistent with the use of the term in the patent specification and common use of the term in the relevant art.
The common standard that is currently used for claim construction in litigation is discussed, for example, in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). As discussed in Phillips, claim terms are "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, i.e., as of the effective filing date of the patent application." Phillips further points to the patent specification as being the best guide to the meaning of a disputed term but acknowledges that the prosecution history can be useful when the specification is unclear. Extrinsic evidence (e.g. expert testimony and dictionaries) may be useful, for example, in educating the court regarding the field of the invention or helping determine what a person of ordinary skill in the art would understand claim terms to mean. However, courts generally view the extrinsic evidence as being less reliable than intrinsic evidence.
Since AIA proceedings were intended to supplement and not reargue issues that were presented during the prosecution of the patent application, it was originally felt that a similar rule should be used to interpret the claims in AIA proceedings, as these proceedings share many other similarities with prosecution. However, in recent years the majority of patents involved in AIA proceedings have also been the subject of litigation or similar actions, such as proceedings before the U.S. International Trade Commission (ITC). AIA proceedings are also being used more in adversarial situations than originally envisioned. The possibility of parties using both AIA proceedings and litigation increases the probability of differing results that lead to inconsistent findings, unfair outcomes, and overall inefficiency. With the new rule changes, claim construction standards for AIA proceedings and other adversarial proceedings are now the same, possibly reducing the likelihood of some of these problems.
Making these standards uniform not only decreases the likelihood that inconsistent results may muddy the waters, but also has the effect of making claim construction in AIA proceedings and more adversarial proceedings directly relevant to one another. Due to the different standards applied in the past, the PTAB often ignored construction of the court and similarly, the courts ignored the construction of the PTAB. Making claim construction decisions directly relevant to one another may increase efficiency and decrease cost.
In light of the impending rule changes, clients contemplating attacking the validity of a patent in an IPR or other AIA proceeding may wish to file their action as soon as possible. If you desire to have claims interpreted under the BRI standard, November 13 is the magic date.
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