By Fritz Klantschi
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On November 13, 2018 the USPTO Patent Trial and Appeal Board (“PTAB”) adopted a narrower standard for interpreting patent claims. This will now make the PTAB claim construction standard the same as that used by federal courts. Since 2012, the PTAB had used the “broadest reasonable interpretation” (“BRI”) claim construction in post-grant proceedings, which are proceedings that provide litigants a more cost-effective forum than the courts to resolve patent validity disputes.
Under the BRI standard, claim terms are given the broadest interpretation consistent with their plain meaning in light of the specification as understood by one of ordinary skill in the art. (In a patent, the claims section defines the matter for which protection is sought, and the specification is a written description of the invention.) Both the district courts and the U.S. International Trade Commission (“ITC”) used the so-called Phillips standard that required a patent claim to be given the “ordinary and customary meaning” to “a person of ordinary skill in the art . . . at the time of the invention.” The Phillips standard was first articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and further developed in subsequent cases.
Under the two-standard system, a party could argue two different claim constructions, one before the PTAB and the other before the district courts, which may cause different outcomes. With this change, the Phillips standard now will apply to Inter Partes Review (“IPR”), Post Grant Reviews (“PGR”) and Covered Business Method (“CBM”) proceedings before the PTAB.
Currently over 85 percent of the patents that are in IPR are also being litigated in court. With the PTAB adopting the same claim construction standard as the district courts and the ITC, there will likely be fewer inconsistent opinions, and the change should reduce the prospect of parallel litigation over the same patent.