By Jason Rantanen
In Cuozzo v. Lee (2015), the Supreme Court affirmed the USPTO’s use of the Broadest Reasonable Interpretation (BRI) approach to claim construction in inter partes review. As Dennis wrote in May, the PTO is now considering changing the standard it uses to that of “a civil action to invalidate a patent under 35 U.S.C. 282(b), including 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.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 21221, 21226 (proposed May 9, 2018). Here’s the Notice of Proposed Rulemaking.
The period for comments closes on July 9, 2018, so if you’d like to submit a comment on the proposed change, you should do so soon. According to the Regulations.gov page for the proposed rulemaking, only 8 comments have been submitted so far. Note that the proposed standard would apply to IPR, post grant review, and covered business method review proceedings.
The lack of comments on changing from BRI to In re Phillips in IPR claim construction may be due to satisfaction of some on one hand versus indiffernce of others who think it will make little practical difference in IPR outcomes? [Or, who even think it may even have adverse consequences for some patent owners no longer able to argue the difference in claim construction between IPRs and D.C.s in the more than 85% of IPRs in which the patent is in paralell D.C. litigation?]
Probably the right thing to do. I doubt they’ll get many comments agin it other than perhaps from “the infringer lobbylol”.
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