October 30, 2020

Volume X, Number 304

Advertisement

October 29, 2020

Subscribe to Latest Legal News and Analysis

October 28, 2020

Subscribe to Latest Legal News and Analysis

October 27, 2020

Subscribe to Latest Legal News and Analysis

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.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VIII, Number 129
Advertisement

TRENDING LEGAL ANALYSIS

Advertisement
Advertisement

About this Author

Michael C. Newman, Intellectual Property Attorney, Mintz Levin,Patent Litigation Federal Circuit Appeals International Trade Commission Federal District Court Strategic IP Monetization & Licensing
Member

Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation, to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).

Michael represents a broad range of clients in cases involving such diverse technologies as integrated...

617-348-1626
Peter J. Cuomo, Mintz Levin, Patent Litigation Lawyer, Expert Discovery Attorney,Patent Litigation IPRs & Other Post-Grant Proceedings Federal Circuit Appeals Hatch-Waxman ,ANDA Litigation Federal District Court
Of Counsel

Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. Peter's primary focus is in patent litigation where he has experience in every phase from pre-suit investigations through appeal, including, initial evaluation and case initiation, fact and expert discovery, pre-and post-trial motion practice, and trials and appeals. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation...

617-348-1854
Patrick T. 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 devices, lighting, clean...

617-348-3055
Advertisement
Advertisement