'; USPTO adopts federal courts’ narrower claim construction standard for post-grant proceedings

USPTO adopts federal courts’ narrower claim construction standard for post-grant proceedings

February 22, 2019 Newsletter

The days of conflicting claim construction standards between district court proceedings and post-grant proceedings are over. As of Nov. 13, 2018, the Patent Trial and Appeal Board (PTAB) stopped applying the Broadest Reasonable Interpretation (BRI) standard in new America Invents Act proceedings, instead adopting the standard the U.S. Court of Appeals for the Federal Circuit adopted in Phillips v. AWH Corp.

The consistency of standards in PTAB and district court proceedings will reduce the opportunities for gamesmanship previously enabled by the divergent approaches, says Leonard Hua, a shareholder in Leydig’s Chicago office.

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“Being able to litigate a claim under two different standards created a situation where a patentee or challenger could make one claim construction argument in the district court, then turn around and make a wildly different and contradictory argument before PTAB,” Hua says. “Now, you have to pick the same horse to ride in both forums.”

The rule change, published in October 2018, revises 37 CFR § 42 to provide that claims in inter partes review (IPR), post-grant review, and covered business method proceedings “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b)…” The new standard applies only to petitions filed on or after Nov. 13, 2018; the BRI standard will continue to be used in proceedings initiated before that date.

PTAB’s adoption of a narrower standard is a positive development for patentees, says Thomas Canty, a shareholder in Leydig’s Frankfurt, Germany, office.

“Under the broader BRI standard, PTAB would essentially construe claims against the drafter such that if there were an ambiguity in a claim limitation, the PTAB would be obliged to resolve the ambiguity by choosing the broader of two reasonably possible alternatives,” he says. “That makes a lot of sense when applied by examiners during initial examination when the applicant has a full opportunity to amend to correct an unwanted interpretation. But the BRI makes less sense when applied by the PTAB during post-grant proceedings when the patentee’s ability to amend is much more limited.

“I expect that application of the Phillips standard, coupled with the Supreme Court’s recent decision requiring PTAB to issue a final written decision on every challenged claim in an IPR, will likely reduce institution rates and marginally decrease the number of successful challenges.”

Canty also expects the rule change will create efficiencies for the PTAB, the courts, and litigants since it requires PTAB to consider – though not necessarily adopt – claim construction determinations made in prior proceedings in district court.

“This decreases the likelihood or need for a second drawn out, costly claim construction fight before PTAB if a district court has already weighed in on the issue,” Canty says.

Thomas P. Canty
Leonard Z. Hua