Fildes & Outland, P.C.

New Claim Construction Standard for IPRs, PGRs, and CBMs

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On October 11, 2018, the USPTO issued a notice of final rulemaking that changes the claim construction standard for inter partes reviews, post-grant reviews, and covered business method patent proceedings (AIA trials) before the Patent Trial and Appeal Board.  Effective November 13, 2018, the “broadest reasonable interpretation” (BRI) standard will be replaced with the federal court claim construction standard (as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny), which includes construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.  Thus, the claim construction standard used in AIA trials will be the same as the claim construction standard applied in federal courts, which should lead to greater consistency between AIA trials and patent litigation in federal courts.  The new claim construction standard will only apply to new IPR, PGR, and CBM petitions that are filed on or after the November 13, 2018 effective date, and thus will not apply retroactively to a proceeding that is pending as of the effective date.

In addition, the final rule provides that the PTAB will take into account any prior claim construction of a term of a claim from a civil action or an ITC proceeding, if the prior claim construction is timely made of record.  A prior claim construction decision should be filed as soon as it becomes available, preferably with the petition or preliminary response.  After institution of a trial, a claim construction decision may be filed through a motion to submit supplemental information.

The USPTO expects that the new rule will provide for greater efficiency, predictability, and confidence in the patent system.

There may be a surge of petitions filed prior to the November 13, 2018 effective date, as petitioners seeking to invalidate patent claims via an AIA trial proceeding arguably would prefer the broader BRI claim construction standard.

A copy of the Federal Register Notice may be accessed at