Claim construction continues to hold focus as the centerpiece of contested patent cases — both in court and in administrative AIA trials (primarily, Inter Partes Review proceedings) before the Patent Trial and Appeal Board (PTAB). One element of current practice is that the USPTO applies a different standard for construing claims than do courts or the USITC in infringement litigation. (Compare Broadest Reasonable Interpretation with Phillips / Ordinary Meaning standards).
One of PTO Director Iancu’s early initiatives has been to unify the standards. That process began with a notice of proposed rulemaking with finalized rules coming later this fall.
The USPTO has posted comments submitted on the proposed change — with over 350 submissions. Although the bulk of submissions favor the change, a substantial number also argue that the BRI standard is an important aspect of IPR effectiveness — with the beneficial result of lowering consumer costs and improving access to medicines. It will take some time to review these comments.
I was involved in two of the submissions:
- Professors of Law: Supporting change as promoting uniformity and clarity. Although I provided some input on this document, the primary drafter was Prof. Vishnubhakat (Tex.A&M).
- Prof. Crouch: I also submitted my own memo highlighting the issue of estoppel and deference to claim construction by other tribunals. The proposed rule do not address directly these issues, and I suggest that the USPTO should establish its rules and practices associated with PTAB Trial Proceeding claim construction in a way that best ensures that later tribunals will honor those constructions.
Other Law Prof Submissions: