USPTO: Claim Construction in AIA Trials

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:

  • Profs. Sarnoff and Ghosh: “We generally support the idea of a unitary post-grant interpretive standard in the PTO and the courts. However, we . . . encourage you to seek legislation to require the courts to adopt BRI for infringement litigation.” (Same from Prof. Dreyfuss).

58 thoughts on “USPTO: Claim Construction in AIA Trials

  1. 8

    I present here text from a long discussion under point 5 below, involving Ron Katznelsen and Paul Morgan. Why, because I want to know the answer and nobody has given it to me yet. Any volunteers?

    “Thanks for that answer Ron. I thought it must be like that. But my question was inspired by the recent Activis case and you still haven’t answered it.

    In Activis, the claim recited “sodium” and the competitor used potassium instead. That was held to be infringement under a DoE. The point is: what would have happened if “potassium” had been available as a novelty attack, given that, in Europe, potassium does not take away the novelty of sodium.

    To return to the USA, with a nod to Paul Morgan, does that then mean that the DoE is incompatible with the maxim “What comes after, and infringes, if coming before takes away novelty”.

    I shall be disappointed if you tell me in reply that the cure for everything is Section 103. That, for me, is a cop-out.”

    Here a Link to another blog, for info on the Activis case:

    link to

      1. 8.1.1

        Well yes, Ron. It was that very reply of yours that prompted my #8. You see, I thought you had not answered my question. I still think that.

        If you don’t understand my question, about whether a DoE fits or not with the “What comes after, and infringes…..” maxim, well that in itself is very interesting intelligence for me.


          You ascribe to someone else a “not understanding” when that condition applies to you.

          Ron’s answer was eminently clear – and quite in fact touches upon another concept that has been explored here: the concept of ladders of abstraction. In Ron’s answer, the rung for that particular ladder may have been one in which sodium and potassium were on the same rung.

          That in itself is a very interesting intelligence” – as you put it.

          Why in the world would you feel that 103 is a cop-out? DO you not think that DOE applies to 103 conditions?

          Additionally, I could not help but notice that you switched from validity (a wider term) to strictly novelty (a more narrow term) in your continued conversation. Does this have to do with your other views vis a vis PHOSITA in regards to the two?


            It has been said that what comes after, and infringes, if coming before, deprives of novelty.

            Or, in other words, the claim has to mean the same thing, both for infringement and validity.

            Suppose there is an infringement, but only because of the DoE.

            Now suppose that which infringes under the DoE instead came before. Would it then deprive the claim of novelty? Yes or No?

            If Yes, must the PTO construe the claim using a DoE, when testing the claim for novelty?

            If No, where does that leave the validity of the “What comes after…mantra?

            I see no answer yet, not from you and not from Ron.


              You have parsed the saying incorrectly, artificially limiting invalidity (the word you should have used) to merely one form of invalidity: novelty.

              This appears to be merely a sign of your inconsistency (on other matters). First, you want (but do not cogently explain) to inconsistently use “secret prior art” ONLY for novelty, and here you incorrectly parse a phrase ONLY to novelty.

              Why does it appear that you do not want to give full faith and credit to obviousness?


                Why? Because I’m talking about claim construction and the maxim that “What comes..infringes…novelty”.

                The maxim has nothing to do with obviousness.

                The maxim exclusively addresses i) claim construction ii) what infringes and iii) what takes away novelty.

                1. The maxim – being merely a maxim – should NOT be read as woodenly as you are attempting.

                  The maxim has to do with validity. CLEARLY, validity is NOT limited to novelty.

                  One with a mind willing to understand WOULD understand that.

                  And yet, YOU persist in not wanting to understand…

                2. If you include obviousness in “the maxim” then everything that the teaching in the patent makes obvious will inevitably infringe under the DoE.

                  Is that what you are saying? That’s not my understanding of the DoE.

                  Or are you aserting that it is “the maxim” I quoted which is wrong?

                3. Inevitably?

                  Sounds like you just don’t understand obviousness.

                  So – again – you attempt to parse validity, with no cogent reasoning as to why.

                  For someone who likes to quip about minds willing to understand, you expend an enormous amount of energy refusing to understand.

  2. 7

    >>Profs. Sarnoff and Ghosh:

    Would you please Dennis require disclosures from these people that you link to.

    All ethics are gone from academia.

  3. 6

    A lot of this has to do with KSR. Basically, KSR has made it so the fact finder can find claims either valid or invalid based on the evidence depending on their personal belief system. So you go to the PTO and get claims allowed based on BRI because of fact finder decides they are patentable over the prior art. You are relying on this. The problem is that KSR gives the fact finder so much latitude that another fact finder can easily find the claims invalid given the same evidence.

    This means that if you have to repeatedly go through the same process that it is highly likely that one fact finder is going to find your claims invalid.

    1. 6.1

      And get that the game is you find equivalent prior art and claim there is some new thing disclosed and then the fact finder looks at essentially the same elements and concludes it would have been obvious to combine when the previous fact finder concluded it would not have been obvious to combine equivalent elements.

  4. 5

    I always get nervous when I see proposals that require that one tribunal honor the claim construction of another; for example, that would require the PTAB to honor a district court claim construction.

    The problem with these proposals is that they come mostly from academics, who assume that claim construction is an exercise in which the “true” definition of a disputed term or phrase is created, akin to creating a “dictionary” for the terms based on the intrinsic or, in some cases, relevant extrinsic evidence. The underlying fallacy behind this approach, which Dennis seems to support, is that it assumes there is only one objectively “correct” claim construction.

    But there is none. Claim construction in litigation is nothing more than an exercise in resolving a limited number of disputes that are relevant to infringement issues (and in fewer cases, invalidity issues). The parties present their proposals and definitions with an eye towards more easily capturing, or distinguishing, the particular accused products in the case. The result is a set of competing claim constructions that narrowly focus on a few issues relevant to the particular case, rather than coming up with a pristine ‘definition’ for the term.

    District judges are, of course, not bound to take either parties’ construction. But it is an adversarial proceeding, so the judge is naturally going to focus the adjudication on the issues the parties care about.

    This is why you can have multiple litigations involving the same patents, involving different defendants and products, and courts can issue different constructions that are all nevertheless “correct” based on the record and resolution of the arguments presented.

    So taking a litigation-inspired set of constructions and importing it into a PTAB proceeding is dangerous; it may address issues having no relevance to the prior art in the PTAB proceeding at all, and ignore the real disputed issues in that proceeding. So I think that some respect, consideration and comity is due, but requiring the PTAB to abide by a district court claim construction seems really unwarranted.

    1. 5.2

      The problem is that I could assert a patent in court and win with a particularly claim construction and then have the patent invalidated with a different claim construction in the PTO.

      The patentee should have some control of the claim construction at the PTO at least against the same defendant.

      1. 5.2.1

        As noted here before, because of the two IPR time deadlines [filing deadline and proceeding length] versus typical D.C. trial times, it is rare for the D.C. case to be decided first. As additionally noted, very few such differences are due to claim interpretation differences rather than differences between APJ patent attorney analysis of claims and prior art technology versus lay jurors.


          It is argued below that the DOE does not require any claim construction. What comes to mind is a Fed. Cir. decision [Spalding – J. Rich?] at least 15? years ago interpeting the claims on a dimple pattern on a golf ball.


            Who is arguing such?

            Consider the source. Ron notes that DOE is applied AFTER claim construction (“Equivalents are determined based on, (and after) the claim boundaries are determined.“).

            Is this what you are negating?

            Are you really resting on the musings of MaxDrei for your proposition here?

    2. 5.3

      taking a litigation-inspired set of constructions and importing it into a PTAB proceeding is dangerous; it may address issues having no relevance to the prior art in the PTAB proceeding

      You made a strange leap here. The goal in both forums is construing terms in a claim. Yes, you can construe a claim term with the intent of resolving an issue in litigation (e.g., infringement) but the court should still be following the usual procedures for claim construction. If the term is construed in court to cover “X” (because the patentee successfully argued that it covers X), it is not fair to allow the patentee before the PTAB, facing new art, to argue that the term does *not* cover X.

      1. 5.3.1

        People from the patent prosecution realm always say this; they have a more romanticized view of claim construction as trying to find some objective truth about the meaning of words. But the real truth is that the parties in district court claim construction are singularly focused on the accused products and the strategy of winning, and the district court pushes the proceeding to razor focus on the issues in the case.

        This problem is exacerbated by the patent rules and local practices of many district judges, who won’t even construe a term or phrase without a narrative description from the parties as to the specific non-infringement or invalidity issue the dispute will resolve. If it won’t resolve a concrete issue, the Court often won’t entertain it.

        For example, you could have a patent with a brutal narrowing disclaimer in the file history or the specification, a remarkably clear and unambiguous one. But if the defendant’s product reads on the claim even if the narrowing disclaimer is adopted as part of the construction, the defendant will probably never argue it in litigation (as it will make the invalidity case harder without helping the non-infringement case). The plaintiff probably won’t want to import the disclaimer, either, to keep the claims broad for future defendants. And if the disclaimer is not relevant to any issue in the case, the district court judge isn’t going to import the disclaimer himself or herself, either, without one of the parties arguing for it.

        So the end result, and I’ve seen this happen many times, is a claim interpretation that is “objectively” wrong because it totally ignores a part of the intrinsic record because it wasn’t relevant to the issues in that particular case. The result is a claim construction that is dangerously unreliable for any future proceeding. Another defendant could come along later and argue the disclaimer because it helps distinguish its accused products, or the plaintiff could raise it if a different piece of prior art comes up that makes the narrowing disclaimer relevant. Different issues presented can naturally and properly lead to a different claim construction.

        I get the fairness issue, MM, but claim construction in litigation is a really poor process for trying to ascertain an objectively “true” construction for all purposes, so trying to enforce consistency from one proceeding to the next seems problematic.


          People from the patent prosecution realm always say this; they have a more romanticized view of claim construction as trying to find some objective truth about the meaning of words.

          I’ve done plenty of litigation and I work with litigators all the time so not much in the way of romantic notions here. 😉

          I don’t think anyone is proposing that district court constructions be adopted mechanically by the PTAB. On the contrary, as Dennis wrote above, it’s really about estoppel (i.e., no arguing contradictory meanings in district courts versus the PTAB) and deference. With respect to the latter, it could be as simple as taking the district court construction as the starting point and then asking the parties to prove that the court’s construction is incorrect for some reason (which will be very easy to do sometimes; and sometimes it will be less easy).

          Estoppel is the more important part of the picture here, I think. It’s a subject that needs to be discussed a lot more than it is because larger tech companies especially seem to be engaged in a never-ending game of bait-and-switch when it comes to describing the prior art versus the “tech” described by their claims.


            I find it interesting here, the apprehension that the PTO will construe the claim wider than the court trying the infringement issue. Why, because in Germany, the century-long apprehension has been the inverse of that. Owners of bad claims get to enforce them, because the court trying validity has found a narrow claim construction.

            But in the USA, why is it such a problem if the DC finds a narrow claim construction in order to do justice, whereas the PTO finds a broad construction, also to do justice?

            Germany is well-known as a country that bifurcates infringement and validity. The Federal Patents Court decides on validity while the “District” (as it were) courts do infringement.

            Mario Franzosi likens the situation in Germany to a long-haired Angora cat. When it threatens, it makes its hair stand on end, thus to appear twice its normal size.

            But when its owner wants it to have a small size, it douses the cat with water. As thus introduced by its owner to the Federal Court then, the cat, the claim, appears to be tiny.

            For those the patent owner attacks with his cat in District Court, that is unjust, not fair.

            But this claim construction issue is, I think, a good example of the phenomenon that, as soon as a problem is exposed, debated, and agreed to be a Bad Thing which must be stopped, it loses its sting. Judges in Germany wised up, long ago.

            Is there though, in the USA, the necessary agreement, that variation in what the claim means (depending on which court you’re in) is necessarily and inevitably a Bad Thing? I’m not quite convinced yet.


              Max: why is it such a problem if the DC finds a narrow claim construction in order to do justice, whereas the PTO finds a broad construction, also to do justice?

              You apparently miss a fundamental concept in “justice.” The answer has no territorial or jurisdictional basis. It is simply a fundamental principle of the definition of property: under the Patent Act, an issued patent is presumed valid, 35 U.S.C. § 282, and “shall have the attributes of personal property.” 35 U.S.C. § 261. That property is defined by a boundary set by the scope of the patent claims. Therefore, the metes and bounds of the claim determined by its construction define the “property line.” Like any other property, there can be only one “property line” for an issued patent claim that delineates it from the property of others or the public under § 261. The extent of an item of personal property cannot vary depending on which tribunal is adjudicating its boundaries.

              Because an issued patent claim defines the unique boundary of the scope of an item of personal property, 35 U.S.C. § 261, only one claim construction can be applicable in adjudicating that property right. And that single interpretation must be applied in infringement analysis as well as in invalidity analysis.

              This not rocket science Max. Just as your yard’s property does not have multiple boundary lines, so do patents must have one single claim construction, i.e., the same construction standard.

              See the detailed explanation I provided in our IEEE-USA comments to the PTO at
              link to


                Well stated.

                A good rebuttal as well to the cogent writing of Lode Runner above.

                For me, I think the actuality is a little more subtle (although I tend to lean more towards Ron’s view).

                Where I depart slightly and move towards Lode Runner’s is that often the arguments about “where that property line is” can be more than “two dimensional,” and be focusing on different dimensions.

                In this analogy, the arguments in court are not directly related (perhaps) to merely the longitude and latitude of the demarcations of the property (in one particular case), and may instead be debating the contours of dimensions 6 and 7; while a separate case may be debating about different contours 4 and 5.

                A bit towards Lode Runner’s view then is that one particular court decision may not “mesh” with another, even while – as Ron points out – both are still involved with the same general notion of defining the boundary line.

                Patents simply can have MANY more boundary lines than real property.


                Well argued, Ron and until very recently people in the UK would have agreed with you 100%. One line. Not rocket science. Indeed, the proverbial “N0 Br41n3r”. Acte claire.

                But then came the recent Activis case at the UK Supreme court, on infringement by equivalent.

                What if it had been instead at the US Supreme Court, I wonder. I mean, does that single bright line of zero width that defines the edge of the area protected by the claim lie outside or inside the act of infringement by equivalent?

                One might think the question a nonsense, one that “does not compute”. But at least in England, it ain’t that simple.

                If you have covered the point in the Paper you link to, please forgive. Thanks.

                1. Your question is a “nonsense” given the fact that – as already noted – it would be a fallacy to think that there is a simple “bright line” equivalent to the latitude and longitude brightness of real property.

                  What exactly is your point of bringing in the doctrine of equivalents? Is there something about the doctrine that you do not understand?

                2. To repeat.

                  Ron states:

                  “…that single interpretation must be applied in infringement analysis as well as in invalidity analysis.”

                  OK. let us then look at a case where an act is found to be an equivalent and to infringe. What comes after, and infringes, if coming before will anticipate, right?

                  So, do such “equivalents”, if coming before, destroy novelty?

                  Or, is Ron’s “single interpretation” of the claim expansive enough to read on to such an “equivalent” during the novelty enquiry?

                3. Good point about claim interpretation using the DOE, as a D.C. can do in some cases. The PTO in an IPR or any other proceeding cannot apply the DOE.

                4. Max,
                  Caution: do not conflate the DOE with claim construction. Equivalents are determined based on, (and after) the claim boundaries are determined. Only after claim construction is established, can one judge whether an alleged product performs a function equivalent to the claimed function.
                  So, for example, Judge Learned Hand first construed the Wright Brother’s claim by (a) noting that they disclosed interconnected ropes for warping the wings and turning the rudder, and (b) noting the examiner’s statement that a choice of a different coordination device – such as Glenn Curtiss’ accused infringing manual technique – is merely a “matter of taste,” and “is only an obvious modification.” That established the broad “pioneering” scope (boundary) of the claim and the application of the DOE followed later, finding infringement.

                5. Thanks for that answer Ron. I thought it must be like that. But my question was inspired by the recent Activis case and you still haven’t answered it.

                  In Activis, the claim recited “sodium” and the competitor used potassium instead. That was held to be infringement under a DoE. The point is: what would have happened if “potassium” had been available as a novelty attack, given that, in Europe, potassium does not take away the novelty of sodium.

                  To return to the USA, with a nod to Paul Morgan, does that then mean that the DoE is incompatible with the maxim “What comes after, and infringes, if coming before takes away novelty”.

                  I shall be disappointed if you tell me in reply that the cure for everything is Section 103. That, for me, is a cop-out.

                6. Max,
                  I am not familiar with the Activis case you refer to. However, equivalence is found based on the claim as a whole and the function claimed. So if the claimed function is in fact based solely on the chemical property of these two elements as Alkali metals – their identical horizontal position in the periodic table with equivalent chemical valence – than the aspects of their chemical equivalence may be the reasons they they can be patentably equivalent in a broad construction of a claim.
                  If the claimed invention does not depend on the atomic size of the element, than the use of Sodium or Potassium in the claimed invention would be equivalent.

  5. 4

    Just a friendly reminder: if you sit back quietly and pretend that everything is normal, then you’re no less of a disgrace than the absolute and t0 t@l piece of s h t who ate out Vladimir Putin’s butth 0le on TV earlier today.

    1. 4.1


      Find an appropriate forum Malcolm this is exactly the type of NON-patent law rant that you have had expunged nigh countless times.

      1. 4.1.1

        NON-patent law rant


        But we all had to listen to you rant about “ivory towerism” (whatever the e f f that is) and “political correctness” (talk about “wtf”!) for YEARS, Billy. And I also had to listen to your bff Night Wiper rant about Obama, something you never seemed to complain about.

        Hypocrite much? Of course you are. It’s the essential nature of a dust-kicking glibertarian p.o.s.


          The difference is the nexus to patent law. I am lamenting the fact that it is impossible to have an intelligent ethical debate in this country. This includes regarding patents.

          You just generally rant, although I admit this is probably one time where I agree with you. I do resent your name calling.


          Night Writer hits it: my comments have a clear nexus with patent law and patent law issues.

          Your rants (of which type is here) has ZERO to do with patent law and has ZERO place here.

  6. 2

    I noticed in your comments on the change that you are proposing to require the PTAB to DEFER to all prior issued claim construction….whether at the district court, ITC, or the PTAB. Does this mean that you are advocating that prior PTAB claim construction…made under the BRI standard….would need to be deferred to even AFTER a potential shift by the PTAB to the Philips standard of proof? Or is this part of your discussion of whether the ‘issue is the same”?

    It also appears in your reworked rule that you are raising the status of extrinsic evidence to a level on par with the intrinsic evidence contained within the patent (including the patent prosecution)….which is more likely to CONFUSE the issue of claim construction rather than make it clear IF the patent owner is using his own lexicon to construct the claims….as per longstanding practice.

    Finally…your recommendation to drop reference to 35 U.S.C.
    282(b) because there is no ‘invalidity action’ under it seems puzzling…since 282(b) is all about the invalidity defenses of a civil action and specific references various requirements of the claims and reisssuing amended claims as needed…something I would expect needs to be addressed now that the PTAB isn’t allowed to just refuse any amendments on a whim anymore.

    1. 2.1

      VG – Thanks for the comment thoughts.

      (1) In my comment, my intent is that the PTAB defer to prior claim construction by a tribunal following the ordinary-meaning (Phillips) standard.
      (2) The PTAB proposal referred to reliance upon intrinsic evidence but did not refer expressly to extrinsic evidence. If the rule is going to refer to one then I suggest that it should also refer to the other. I don’t argue that the two should be equivalent.
      (3) A civil declaratory judgment action can be based upon 282(b) defenses, but Section 282(b) itself does not authorize any civil action — that has to come from the non-patent specific declaratory judgment act. The PTO approach of focusing on claim construction in invalidity actions begs the question as to whether claim construction is different questions of validity vs infringement. My proposal is designed to link them all together in a uniform manner (unitary claim construction standard).

      1. 2.1.1

        Dennis, yes, avoiding nose of wax claim twisting between validity and infringement claim interpretations by the same party even in different tribunals is a desirablle goal. However, as a practical matter, usually only disputed claim elements get interpreted, and which claim elements are disputed or not can vary greatly between validity disputes and infringement disputes. E.g., a claim term that provides no distinction over asserted prior art no matter how interpreted might be critical to a non-infringement defense if interpreted one way and not another, but will not likely get formally interpreted in an IPR. Whereas since non-infringement is statistically more important and far more often earlier-decided in D.C. proceedings, that is more likely to be the focus of claim interpretation there.

  7. 1

    The claim construction should be based on the standard used in federal district courts. The test for initiating an IPR should be whether it is more likely or not that the petitioner can win based on a presumption of validity of the patent.

    1. 1.1

      Way to fold in the Congressional statement of “Presumption of Validity” (but I would note that the level of the presumption is important too – which may alter your choice of words of “more likely than not”).

      Separately, I have to wonder how many of the “substantial number” arguing for BRI can be linked to Efficient Infringers…

      1. 1.1.1

        I have to wonder how many of the “substantial number” arguing for BRI can be linked to Efficient Infringers…

        Everybody — with the possible exception of the entities who exist only to assert patents — is an “efficient infringer” (to the extent that the term “efficient infringer” has any meaning in the first place; please go ahead and define it for everyone LOL you’re the “expert”).


          I think your bud Mark Lemley wrote a paper about efficient infringement or why you shouldn’t pay licensing fees.


          Better yet, Malcolm, as you assert yourself to be a patent attorney, why don’t you deal with your cognitive dissonance and reason out why Efficient Infringement is such a NON-DESIRED thing.

          You may have to be honest with yourself….

      2. 1.1.2

        Efficient infringement is basic capitalism 101. Anything that hinders that is socialism.


          Nonsense. Sheer utter nonsense.

          Not only do you know amazingly little about patent law, you know amazing little about the various social philosophies.


            It’s hard to imagine anything more antithetical to capitalism than a patent. If the efficient infringer can be an item better and cheaper while paying a force royalty than the owner of the patent, logic says that everyone is better if they do so.

            I can understand an objection on moral grounds to this sort of infringement, but not on grounds that are rooted in capitalism.


              Your imagination is astoundingly lacking.

              Do you understand personal property or what Quid Pro Quo entail?


                If I own land with a lake, and you can make more efficient use of the lake than I can to provide a quality good or service to the public, while paying me a forced royalty for the use, capitalism practically demands that you do so. Anything else would be waste of profitable resources.

                I, out of notions of personal liberty, may object. But my objections are hindering the best use of the lake as determined by the market.

                1. You really do not get the concept of personal property, eh?

                  Your view of “capitalism” as some type of forced “best use” is decidedly odd (and completely untethered).

                2. Say I have a milkshake. If you can put my milkshake to better use and make profit from that use while paying me a forced royalty, you would be committing an act of malfeasance towards your shareholders if you didn’t.

                3. You are still missing the concept of PERSONAL property.

                  YOUR milkshake is not (necessarily) something that I CAN (or even should) be “considering” taking from you and putting to use.

                  Paying a forced royalty can cut two ways – one of which is the opposite of capitalism.


          I think that your analytical method is flipped in that a capitalist would take of advantage of efficient infringement to the extent that it is appropriate. However, its availability/viability is neither capitalist nor socialist. Like any other regulation of commercial activity, patents are a form of market distortion subject to the will of the sovereign.

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