Effective on November 13*, the PTAB is announcing a final rule, changing the standard it uses to construe claims.
Instead of the broadest reasonable interpretation (BRI) standard, the PTAB will begin using the Phillips standard used by the federal courts. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This change is not retroactive. Rather, the new standard will apply to petitions filed after the effective date of the new rule, expected to be issued sometime in early November. The PTAB will continue to apply the BRI standard to petitions filed before the effective date of the new rule. Consequently, for clients interested in initiating an IPR, PGR, or CBM using the BRI standard, the petition should be filed within the next month.
The new rule, 37 C.F.R. § 42.100(b), reads: “In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action 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. Any 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 inter partes review proceeding will be considered.”
The full text of the final rule is published in the Federal Register.
*Per the PTAB press release on October 10, 2018.