Posternak Blankstein & Lund LLP is now Arent Fox. Read the press release

USPTO Sets New PTAB Claim Construction Standard

On October 11, the United States Patent and Trademark Office published a new final rule altering the claim construction standard applied in inter partes review, post grant review, and covered business method review proceedings.

Effective November 13, 2018, the USPTO’s new final rule will change the how the PTAB construes claims, moving from the broadest reasonable interpretation (“BRI”) to the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny — the claim construction standard applied in Federal courts. This change will apply prospectively to all IPR, PGR, and CBM petitions filed on or after the November 13 effective date. 

The PTAB’s new final rule summarizes the Phillips standard and states that a claim in IPR, PGR, or CBM proceedings will be construed “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.” As such, claim constructions in these proceedings will now explicitly consider “the claim language itself, the specification, the prosecution history of the patent, and extrinsic evidence, among other things...” In rare circumstances where claim language remains ambiguous in light of the intrinsic and extrinsic evidence, the final rule also states that the Office will apply the doctrine of construing claims to preserve validity.

The USPTO’s new final rule will also impact how the new claims are construed in the event that a patent owner files a motion to amend.  In proceedings filed on or after the effective date, the new final rule requires the PTAB apply the Phillips standard when construing substitute and amended claims in IPR, PGR, and CBM proceedings. As the USPTO had previously justified using the BRI standard in IPR, PGR, and CBM proceedings on the ground that claim amendments were permitted and such a standard promoted clearer claim drafting, the move to the Phillips standard was reasonable because amendments in IPR, PGR, and CBM proceedings are “limited to a reasonable number and are required to be narrowing.”  However, the final rule notes that the PTAB could only consider “the prosecution history that occurred previously in proceedings of the office prior to the proceeding at issue,” (emphasis added) indicating that a patent owner’s statements in a motion to amend may not be considered part of the intrinsic record in construing the scope of an amended or substitute claim.

Finally, and to further the USPTO’s goal of greater predictability and certainty, the new final rule states that the PTAB will consider any prior claim construction determination in a civil action or proceeding before the ITC regarding a claim term in an IPR, PGR, or CBM proceeding if the determination is timely filed in the record before the PTAB.

The shift to the Phillips claim construction standard will likely significantly reduce the already-rare instances of District Courts and the PTAB reaching inconsistent constructions of a claim term going forward. However, such a result remains possible, particularly when neither the District Court nor the PTAB have the benefit of the other’s ruling on claim scope. In particular, the final rule is careful to note that the PTAB will only consider prior claim construction determinations that are “timely filed in the record.” What the PTAB will consider “timely” remains to be seen.


  • Related Practices
  • Read Time

Continue Reading