by Dennis Crouch
The USPTO’s Final Rule Package on Inter Partes Review Claim Construction is set to publish in the Federal Register on October 11, 2018. Up to now, the PTAB has been using the USPTO “broadest reasonable interpretation” standard to interpret challenged patent claims. Under the new rule, the PTAB will now rely upon the PHOSITA standard more traditionally used for issued patents as articulated by in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and further developed in later cases. This new rule will apply in IPR, PGR, and CBM proceedings. The new rule also indicates that prior claim constructions by a court or USITC “will be considered.” This final rule is essentially unchanged from the proposed rule found in the May 2018 NPRM. Timing: The new claim construction applies to cases involving “petitions filed on or after the effective date of the final rule, which is November 13, 2018.”
[Final Rules 2018-22006]
The change will make it incrementally harder to challenge patents in IPR proceedings — and so there may be some rush to file prior to the November 13, 2018 deadline. However, studies have not really found BRI as applied by the PTAB to be broader than court construction. The different standard has led the various tribunals to disregard and ignore the parallel decisions in other fora. I have supported this rule change — with the hope that it will to more respect between the judicial tribunals, fewer seemingly inconsistent opinions, and a quicker resolution of issues in constested patent cases.
The USPTO received 374 comments on the proposal — including two from me. My comments generally supported the proposal but did suggest that the approach be modified to do an even better job of ensuring harmonization and respect for prior decisions.
Next step: I would also propose using the Phillips standard during regular ex parte prosecution.