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USPTO Proposes Claim Construction Rule Change from BRI to Philips in AIA Review Proceedings

The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”). The change would replace the current Broadest Reasonable Interpretation (“BRI”) standard with the standard articulated in Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  This change would harmonize the claim construction standard applied in inter partes review, post-grant review, and covered business method patent proceedings before the PTAB with the one used by federal district courts and the International Trade Commission.  The proposed amendment would also allow the PTAB to consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an AIA proceeding.

The current BRI standard used by PTAB differs from the Phillips standard used in federal district courts and the ITC. This can result in different constructions for the same or similar claim terms between federal district courts or the ITC, and PTAB panels in AIA post-grant proceedings.  Applying the same standard in all proceedings will improve uniformity, predictability, and overall judicial efficiency.  The USPTO’s proposed change also addresses concerns of potential unfairness resulting from using an arguably broader standard in AIA post-grant proceedings than is applied in federal courts or the ITC.

According to the Office, its “goal is to implement a fair and balanced approach, providing greater predictability and certainty in the patent system” and “[u]sing the same claim construction standard as the standard applied in federal district courts would seek out the correct construction—the construction that most accurately delineates the scope of the claim invention—under the framework laid out in Phillips.” (Citations and quotations omitted.)

Comments on the proposed rule changes can be submitted to the Office at PTABNPR2018@uspto.gov or http://www.regulations.gov within 60 days of the Publication Date in the Federal Register.

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About this Author

Michael C. Newman, Intellectual Property Attorney, Mintz Levin, Law firm
Associate

Michael's practice is focused on his work with the US International Trade Commission (USITC).  His cases in federal courts also include patents, trade secrets, and other intellectual property matters. The areas of technology in which Michael has particular experience include biochemistry, biotechnology, chemistry, computer software, mechanical devices, medical devices, semiconductors, and converged devices.

Before joining Mintz Levin, Michael worked with the law firms Pepper Hamilton LLP and Fish & Richardson PC. He has also worked as a software engineer and has conducted...

617-348-1626
Peter J. Cuomo, Mintz Levin, Patent Litigation Lawyer, Expert Discovery Attorney
Of Counsel

Peter’s practice includes a variety of civil litigation, including trademark and patent litigation, trade secret disputes, and complex commercial litigation. Peter's primary focus is in patent litigation, and he has experience in many aspects, including expert discovery, MarkmanHearings, and pretrial motion practice.

Prior to joining the firm, he practiced in the intellectual property litigation practice in the Boston office of another international law firm. Peter has also previously worked in and supervised an academic laboratory focused on researching infectious diseases.

He is a co-author of multiple scientific papers and spent time in Zambia investigating the co-infection of measles and HIV. During law school, Peter was an editor on the Boston University Journal of Science and Technology Law and a research assistant in intellectual property and the Health Law Department.

617-348-1854
Patrick Driscoll, IP Attorney, Mintz Levin, Patent Procurement Lawyer,
Associate

Pat brings practical experience to the firm’s intellectual property practice, having been an electrical engineer for nearly a decade before beginning his legal career. He practices in all areas of intellectual property law with a focus on patent prosecution and litigation. His experience includes a broad range of electrical and computer technologies such as RF, microwave, antenna, phased array, wireless communications, optical networking, telecommunications, signal processing, GPS, consumer electronics, electronic storage, software-based, aviation control, medical...

617-348-3055