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The PTAB's New Claim Construction Standard: Will the Real Impact Please Stand Up
Beginning on Nov. 13, 2018, the U.S. Patent and Trademark Office (USPTO) will cease to apply the broadest reasonable interpretation (BRI) standard for newly-filed IPR, PGR, and CBM trials under the America Invents Act (AIA). Instead, the USPTO will begin "using the same claim construction standard that would be used to construe the claim in a civil action[,] … including construing the claim in accordance with the ordinary and customary meaning of such claim … and the prosecution history pertaining to the patent." 37 C.F.R. §42.100. The new rules also state that the USPTO will consider "[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record." 37 C.F.R. §42.100.
The USPTO has long applied the BRI standard in proceedings involving issued patents, including reexaminations, reissues, and AIA trials. Federal courts, however, use the "narrower" Phillips standard. While maintaining the BRI standard for reissues and reexaminations, the USPTO has chosen to break with tradition for new AIA trials in order to "[m]inimiz[e] differences between claim construction standards used in the various fora [to provide] greater uniformity and predictability of the patent grant, [as well as] help increase judicial efficiency overall." 83 Fed. Reg. 51,342 (Oct. 11, 2018).
Effect on Rulings
One significant question arising from this change concerns the effect that a "narrower" claim construction standard will have on the patentability rulings. A less obvious question considers the effect that using the identical standard will have on the interplay between AIA trials and parallel actions in district courts.
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