United States: USPTO Proposes Change In Claim Construction Standard For Post-Grant Proceedings

Last Updated: September 6 2018
Article by Jared Doster

Since the enactment of the America Invents Act in September 2012, the USPTO has evaluated a patent's validity in post-grant proceedings1 with a broader claim construction standard than used by federal District Courts. The USPTO's use of this broader standard may have contributed to the Patent Trial and Appeal Board's (PTAB's) tendency to invalidate patents more often than District Courts.

At present, the claim construction standard that is used in post-grant proceedings is as follows:

A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.2

This standard for unexpired claims is often called the "broadest reasonable interpretation" (BRI) standard. According to the Manual of Patent Examining Procedure (MPEP),3 "[u]nder the broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention."4

Federal courts and the International Trade Commission (ITC) use a purportedly different claim construction standard for unexpired claims, known as the Phillips standard.

We have frequently stated that the words of a claim are generally given their ordinary and customary meaning. We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.5

Federal Court decisions and PTAB guidance provide relatively little insight on whether a meaningful difference exists between the BRI and Phillips standards. Under both standards, claims are construed in light of the specification as understood by a person of ordinary skill in the art. In fact, Judge Paul Michel, former Chief Judge of the Court of Appeals for the Federal Circuit, believes that the only meaningful difference is as follows:

[T]he putative claim construction standard between courts and the Patent Office is the same—with the one minor difference being that courts may apply disclaimers made by a patent owner during prosecution, even if the claims do not supply a textual hook for such a disclaimer, while the Patent Office properly forces an applicant or Patent Owner to put the explicit text in the claims if it is not already there.6

Nonetheless, the Federal Circuit believes that there is an outcome-determinative difference in the two standards:

[C]laim construction in IPRs is not governed by Phillips. Under Cuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips.7

If we were tasked with reviewing the [PTAB's] construction according to Phillips, and in fact if the Board had applied the Phillips standard rather than the broadest reasonable construction, this case would be straight-forward. [Appellant's] construction is the only construction of the term consistent with the use of the same term throughout the specification. But this case is much closer under the broadest reasonable interpretation standard given the ordinary meaning attributable to the term at issue.8

Proposed Rule

On May 9, 2018, the USPTO issued a Notice of Proposed Rulemaking that proposes to change the claim construction standard for unexpired claims in post-grant proceedings from the BRI standard to the Phillips standard.9 Specifically, the proposed rule would amend 37 C.F.R. §§ 42.100, 42.200, and 42.300 as follows.

[A] claim of a patent, or a claim proposed in a motion to amend, "shall be construed using the same claim construction standard that would be used to construe such a claim in a civil action to invalidate a patent under 35 U.S.C. 282(b), including construing the claim 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 pertaining to the patent."10

The USPTO states that, under this new rule, "[t]he Office would apply the principles that the Federal Circuit articulated in Phillips and its progeny."11

Even more, the USPTO states that "consistent with Phillips and its progeny, the doctrine of construing claims to preserve their validity would apply to AIA trials."12 It is not clear how this would affect, or be affected by, the PTAB's evidentiary standard. Federal courts presume that patent claims are valid, and thus require clear and convincing evidence (the highest evidentiary standard in civil disputes) before invalidating a patent. The PTAB, however, requires only a preponderance of evidence and, therefore, does not presume that patent claims are valid.

The USPTO proposed also that "[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the . . . proceeding will be considered."13 The notice does not define what constitutes a "timely" motion.

Policy Reasons

According to the USPTO, "[b]ecause the BRI standard potentially reads on a broader universe of prior art than does the Phillips standard, a patent claim could be found unpatentable in an AIA trial on account of claims scope that the patent owner would not be able to assert in an infringement proceeding."14 In short, the USPTO believes that the differing standards cause the shield to be weaker than the sword, and thus makes patent rights less reliable for patent owners.

Additionally, the USPTO believes that the shift from BRI to Phillips would increase judicial efficiency of patent disputes in all forums since, according to one study, "86.8% of patent at issue in AIA trial proceedings also have been the subject of litigation in the federal courts."15

Practice Tips: Submitting Comments and Preparing for the New Rule

This is not a promulgated rule, but merely a notice of a proposed rule.16 According to the notice, the USPTO will be accepting comments until July 9, 2018.17 Comments should be sent by email to PTABNPR2018@uspto.gov or over the Federal eRulemaking Portal at http://www.regulations.gov.18 The USPTO requests that all comments include the docket number PTO-P-2018-0036.19 Be advised that all submitted comments will be made publicly available at https://go.usa.gov/xXXFW and on the Federal eRulemaking Portal.20

For those who are closely tracking this development, it is important to keep in mind that the USPTO is not obligated to promulgate this new rule within a specific period of time after the comment period ends on July 9, 2018. In fact, the USPTO is not obligated to promulgate this rule at all. Also, it may promulgate a new rule that is different than the one proposed in this notice. In short, nothing is certain at this point.

This being said, any retroactive application of this new rule may be useful during the window of time in which one may "timely" submit to the PTAB a claim construction from previous federal litigation. Moreover, while arguing invalidity contentions, petitioners and patent owners should keep the above described policy concerns in mind and not assume that a BRI type of argument will apply for either preserving validity or seeking invalidity.

Footnotes

1. Post-grant proceedings include Inter Partes Reviews (IPRs), post-grant reviews (PGRs), and CBM reviews (CBMs).

2. 37 C.F.R. 42.100(b)(emphasis added)(stating the standard for IPRs); see also 37 C.F.R. 42.200(b)(stating the standard for PGRs); 37 C.F.R. 42.300(b)(stating the standard for CBMs).

3. The MPEP is a guidance document issued by the USPTO to its employees. Although federal courts do not consider guidance documents to be law, courts often consider guidance documents to be persuasive.

4. Manual of Patent Examining Procedure, 9th ed., rev 08.2017, § 2111.01 (Jan. 2018) [hereinafter "MPEP"](emphasis added).

5. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005).

6. Brief for the Supreme Court as Amicus Curiae at 6, Cuozzo Speed v. Lee, 136 S.Ct. 2131 (2016) (No. 15-446).

7. PPC Broadband v. Corning Optical Communications, 815 F.3d 734, 742 (Fed. Cir. 2016).

8. PPC Broadband v. Corning Optical Communications, 815 F.3d 747, 756 (Fed. Cir. 2016).

9. Changes to the Claim Construction Standard for Interpreting Claims In Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 21,221 (May 9, 2018) (to be codified at 37 C.F.R. pt. 42), https://www.federalregister.gov/documents/2018/05/09/2018-09821/changes-to-the-claim-construction-standard-for-interpreting-claims-in-trial-proceedings-before-the

10. Id. at 21,224.

11. Id. at 21,223.

12. Id.

13. Id. at 21,224 (emphasis added).

14 Id.

15. Id.

16. Because this proposed rule involves only rules of agency procedure and interpretation, and not substantive criteria of patentability, the USPTO states that prior notice and comment are not required under 5 U.S.C. § 553. See id. Nonetheless, the USPTO voluntary published the proposal for comment by the public. See id.

17. Id. at 21,221

18. Id.

19. Id.

20. Id.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions