October 11, 2018
According to a final rule change issued on October 10 by the USPTO, all claims challenged in a petition for inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) filed on or after November 13, 2018, will be interpreted according to the same standard applied by federal courts in civil patent cases (“the Phillips standard”). Claims proposed by a patent owner in a motion to amend will also be evaluated under the Phillips standard under the new rules. The new rules also state that any prior claim construction determination concerning a claim term from a district court or an International Trade Commission (ITC) proceeding “will be considered” if submitted to the Patent Trial and Appeal Board (PTAB) in a timely fashion.
Prior to this rule change, the PTAB applied the broadest reasonable interpretation (BRI) standard to unexpired patent claims challenged in an AIA proceeding, as well as to claims proposed in a motion to amend. Only expired claims or claims that would expire prior to the issuance of a final written decision in the proceeding were subject to the Phillips standard.
The USPTO provided a number of reasons for the rule change, with the overriding justification being to increase uniformity, predictability, and efficiency. For example, one reason given was that almost 87% of patents subject to AIA proceedings have also been the subject of patent litigation. The USPTO noted that efficiencies may be realized because the parties could rely on the same claim construction positions taken in litigation as before the PTAB. In addition, the rule change eliminates the potential unfairness of using a broader claim construction standard for patentability determinations in AIA proceedings (resulting in a broader universe of prior art) than used for validity and infringement determinations in federal court. The USPTO also cited Federal Circuit cases stating that a claim construction from the PTAB using the BRI standard may be broader, and is not necessarily the “correct construction” determined under Phillips.
The USPTO also recognized that using the BRI construction in AIA proceedings was no longer justified simply because patent owners have the opportunity to amend the claims, a commonly cited reason in favor of the BRI standard. In particular, the Office noted that only 196 motions to amend had been decided in the past six years, with only 4% of those motions being granted and 90% being denied in their entirety.
This is a substantial change in the rules governing AIA post-issuance proceedings. While this change is seen as a benefit to patent owners, it remains to be seen whether this change will have a significant effect on the outcome of AIA trials. Interestingly, the USPTO acknowledged in responding to public comments that the Phillips standard includes the doctrine of construing claims to preserve their validity. The USPTO commented that it did not expect this doctrine to arise frequently in AIA proceedings, given that it is rarely applied in the courts and is limited to cases where “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” The USPTO further cited the Federal Circuit’s commentary that such doctrine may only be used as a last resort and may not be used to redraft claims to sustain their validity. And as before, unlike in federal court, there is no presumption that a patent is valid in AIA proceedings.
All practitioners practicing before the PTAB should be aware of this rule change. More importantly, any petitioners that are currently drafting petitions should take heed. In addition, any pertinent claim construction decisions from federal court or the ITC should be cited to the PTAB with the petition or preliminary response along with any required explanation. After institution of trial, any claim construction decisions should be submitted as soon as possible according to the PTAB’s rules on submission of supplemental information.
For more information on this decision, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.
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