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PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings

Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent (“CBM”) proceedings.  The Board retired the broadest reasonable interpretation (“BRI”) standard in favor of the standard used to construe patent claims in federal court and the International Trade Commission (“ITC”) as articulated in Phillips v. AWH Corp.  In doing so, the Board announced that it will now consider prior constructions, either from a federal district court or the ITC, in construing a claim term in an IPR, PGR, or CBM, where such prior constructions are timely made of record.  This rule change is another positive development for patent owners and should provide for consistent construction of the same term across multiple tribunals going forward.

Parties may now strategically align claim construction arguments before a district court, the ITC, or the Federal Circuit, which allows for greater consistency across all tribunals and synchronized positions as to validity and infringement.  Although the Board is required by statute to employ a different and less strict preponderance of the evidence standard in determining the patentability of a challenged claim—in contrast to the higher clear and convincing standard used in federal court and at the ITC—there is no statute applicable to either the Board or federal courts requiring different standards for claim construction.  This rule change results in minimizing the differences between claim construction standards used in different fora, with the intent of providing greater uniformity and predictability of the patent grant.  Because a large majority of patents subject to a petition before the Board are also being examined concurrently by another tribunal, considering how another tribunal has already construed the same term should better ensure that the scope of the patent will not depend merely upon the happenstance of which court or governmental agency interprets it.

The change to the Phillips standard is a highly anticipated rule change as evidenced by the 374 comments received by the Patent and Trademark Office – a majority of which supported the change.  The new rule goes into effect on November 13, 2018, but will not apply to petitions filed before that date.  We are therefore likely to see a significant uptick in petitions filed before November 13 as petitioners try to take advantage of the more favorable BRI standard while it still exists.

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About this Author

Brad Scheller, Mintz Levin Law Firm, New York, Intellectual Property and Litigation Law Attorney

Brad focuses his practice on patent disputes in Federal District Courts and at the US Court of Appeals for the Federal Circuit.  With over 12 years of experience, Brad has handled disputes involving a variety of technologies, including electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has significant experience representing clients in inter partes review (IPR) and cover business method patent review...

Daniel Weinger, Mintz Levin Law Firm, Boston, Intellectual Property Litigation Attorney

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked with Pepper Hamilton LLP and as a database programmer with InterSystems, Corp., where he specialized in programming solutions for database development with a focus primarily on integration engines.

While on leave from Mintz Levin, from 2014 - 2015, Daniel practiced as a Special Assistant District Attorney in the Middlesex County (MA) District Attorney's Office, based in the Framingham, MA, district court.  During that time, Daniel prosecuted and tried numerous drug, larceny, breaking and entering, and motor vehicle cases in bench and jury sessions.  He also argued bail hearings, motions to suppress, and motions to dismiss.

Courtney Herndon, intellectual property lawyer, Mintz Levin, Massachusetts, Boston, Associate Justice Geraldine Hines, Massachusetts Supreme Judicial Court

Courtney is an Associate in the intellectual property section. Before joining Mintz Levin, Courtney clerked for Associate Justice Geraldine Hines of the Massachusetts Supreme Judicial Court and Associate Justice Vickie L. Henry of the Massachusetts Appeals Court. 

During law school, Courtney served as a judicial intern to Judge William G. Young of the United States District Court, District of Massachusetts, and to Justice Hines (then an Associate Justice of the Massachusetts Appeals Court), conducting legal research, preparing bench memoranda,...