As part of its ongoing efforts to “shape and improve” post-grant trial proceedings under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) announced on May 8, 2018, a Notice of Proposed Rulemaking to change the AIA trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (ITC) proceedings. 83 FR 21221.
Under the current standard set forth in 37 C.F.R. § 42.100, the Patent Trial and Appeal Board (PTAB) in AIA trial proceedings (most commonly, inter partes
reviews (IPRs)) gives a patent claim in an unexpired patent “its broadest reasonable construction in light of the specification in which it appears.” This standard is—at least in theory—broader than the standard used by district courts and the ITC, pronounced in Phillips v. AWH Corp.
, 415 F.3d 1303 (Fed. Cir. 2005). The proposed change would mandate that the PTAB apply the Phillips
standard, “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.” It would also require the PTAB to consider prior district court or ITC claim construction determinations.
Taken together, these changes address some of the issues often complained of by patent owners. As the USPTO noted in its proposal:
Having AIA trial proceedings use the same claim construction standard that is applied in federal district courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings. . . . Because 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 claim scope that the patent owner would not be able to assert in an infringement proceeding.
Moreover, according to the USPTO, harmonizing the standard could increase uniformity, predictability, and judicial efficiency:
Minimizing differences between claim construction standards used in the various fora could lead to greater uniformity and predictability of the patent grant. In addition, using the same standard in the various fora could help increase judicial efficiency overall. One study found that 86.8% of patents at issue in AIA trial proceedings also have been the subject of litigation in the federal courts.
These changes—like the Supreme Court’s recent SAS
decision eliminating partial IPR institutions—would again require the parties to rethink their current strategies and may counsel toward more focused and streamlined petitions. No longer would petitioners be able to argue for a broad construction to invalidate a patent in an AIA trial proceeding and a narrow construction to avoid infringement in district court. Petitioners would also need to carefully assess whether in the AIA trial proceeding they need to offer express constructions of additional claim terms that may be beneficial to non-infringement, or otherwise risk that a district court or ITC would later hold the petitioner to a plain-English construction.
The Notice was published on May 9 in the Federal Register, 83 FR 21221. Any comments are due by July 9, 2018.