Today, the United States Patent and Trademark Office announced its proposed rulemaking (link is external) to change the prior policy of using the Broadest Reasonable Interpretation standard for construing unexpired and proposed amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act. The proposed new standard is the same as the standard applied in Article III courts and International Trade Commission (ITC) proceedings.
The USPTO also proposed to amend the rules for PTAB trials to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an Inter Partes Review (IPR), Post Grant Review (PGR), or Covered Business Method (CBM) proceeding.
The purposes of the proposed rule include, among other things, to ensure consistency in claim construction between the PTAB and proceedings in district court or at the ITC, and to increase judicial efficiency.
Here are some links to news and commentary on patents and IP for 5-8-18 re: the PTAB and claim construction
1. PTO Proposes Rulemaking to Implement Phillips Claim Construction at PTAB | IPWATCHDOG
By Gene Quinn: “Andrei Iancu has been Director of the United States Patent and Trademark Office (USPTO) for just three months. He has been giving speeches raising the hopes of patent owners, even promising that the American patent system will not continue down the same path it has been on over the last several years…”
May 7, 2018
2. Patent Office Proposes to Jettison BRI in AIA Trials | PTABWATCH
By Sandip H. Patel: “The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts and the International Trade Commission (ITC)…”
May 7, 2018
3. USPTO Announces Notice of Proposed Rulemaking for Claim Construction Standard used in PTAB Proceedings | PATENTLYO
By Dennis Crouch: “USPTO Press Release: Alexandria, VA – Today, the United States Patent and Trademark Office announced its proposed rulemaking to change the prior policy of using the Broadest Reasonable Interpretation standard for construing unexpired and proposed amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act…”
May 7, 2018
4. PTO Proposes to Change Claim Construction Standard Used by PTAB | Patents4life
By Warren Woessner: “While the Fed. Cir. has made it clear that BRI of claims elements cannot yield an interpretation that is narrower that a properly conducted Phillips analysis, the Fed. Cir. uses BRI for claim interpretation in appeals from PTO proceedings and will defer to the PTAB’s interpretation if it determines that the interpretations under BRI and Phillips would be equivalent. Also, in some cases, the parties will agree that an interpretation carried out by the district courts’ (often stayed) proceedings also meets the BRI standard applied in an IPR, but the Fed. Cir. may well require that an analysis of the claim scope(s) be articulated.”
5. Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure | PATENTLYO
“The combination of (1) the USPTO’s new proposed court-like claim-construction for IPRs and (2) the Supreme Court’s SAS decision collectively provides some opportunity for a de facto administrative claim construction procedure. It is likely that a substantial portion of IPR participants will now be focused as much on claim construction as on the underlying validity arguments themselves. Although this is already going on to some extent, once the courts and PTO apply the same standard of law, PTAB claim construction determinations could then be taken as decided issues of law (or at least highly persuasive authority) handed back for the stayed (or upcoming) district court litigation.”