Standard For Claim Construction In IPR’s To Change On 13 November 2018

Over the next month, we can expect to see a mad dash to the patent office by petitioners seeking inter partes review (“IPR”), post-grant review (“PGR”), and covered business method (“CBM”) patents, and a during the same period a delay on the part of patentees in asserting patents. Triggering this is the Patent Trial and Appeal Board’s (“PTAB”) adoption – effective November 13 – of a different claim construction standard: moving from the broadest reasonable interpretation (“BRI”) to the standard adopted by the Federal Courts, the so-called “Phillips” standard. The BRI standard is somewhat focused on technology in general. The BRI construes claims broadly in the context of deciding whether to award a patent in light of the prior existing technology. In contrast, the claims construed under the Phillips standard has an additional focus on whether another party is infringing the invention. The Phillips standard seeks to construe the claims to define the invention as the inventor actually intended, with a focus on the patent and related correspondences with the patent examiner. Construing the claims in this manner may result in a claim being more narrowly rewritten. Prior to the change, petitioners seeking to invalidate patents for obviousness before PTAB have benefitted from the tribunal’s use of the BRI claim construction because this takes into account a much wider scope of prior art than is the case under the narrower Phillips standard. The difference in approach means that it is often easier and less expensive to invalidate a patent before the PTAB than it is in court. However, by harmonizing its claim construction rule with that of the courts, the PTAB is raising its bar for invalidity and making it harder for petitioners to succeed in an IPR, PGR, or CBM. However, PTAB’s more petitioner-friendly BRI claim construction will continue to apply to all proceedings filed prior to the effective date of the new rules. Accordingly, petitioner’s considering a trial proceeding before the PTAB will be motivated to file their petition prior to new rules’ effective date and lock for those proceedings the more petitioner-friendly BRI claim construction. For the same reason, patent owners will hesitate to assert a patent prior to November 13.