On Wednesday, May 9, 2018, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register[1], announcing its plans to change the claim construction standard used in America Invents Act (“AIA”) reviews to the standard applied in the federal district courts and International Trade Commission (“ITC”) proceedings. Under the proposed revision, the Patent Trial and Appeal Board (“PTAB”) would no longer use the “broadest reasonable interpretation” standard and would instead construe patent claims in accordance with the principles that the Federal Circuit articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

As directed by 37 C.F.R. 42.100(b), 42.200(b), and 42.300(b), the PTAB currently construes unexpired patent claims and proposed claims in AIA trial proceedings by giving the claim “its broadest reasonable construction in light of the specification of the patent in which it appears” (the “BRI” standard)[2].  While this BRI standard is consistent with longstanding agency practice and examination procedure, it differs from the claim construction standard used in civil actions and ITC proceedings. In the federal district courts and the ITC, the claim construction principles set forth in the Phillips line of cases controls under which claims are given their ordinary and customary meaning as understood by one of ordinary skill in the art in view of the specification and the prosecution history pertaining to the patent[3]. Where the ordinary and customary meaning of a term is disputed, the courts will first look to the specification for guidance as to the term’s definition, followed by the prosecution history, which can “inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.”[4] Extrinsic evidence, such as expert testimony and dictionary definitions, may also be helpful, although it is less significant than the intrinsic evidence.

This difference in claim construction standards between the PTAB and federal district courts means that decisions construing the same claim in different forums may produce different results. The discrepancy tends to be disadvantageous for patent owners, who must show infringement with a claim construction standard that is potentially much narrower than that which may be used to invalidate the patent before the PTAB. A number of attorneys and bar associations, including the American Intellectual Property Law Association, have also expressed concerns of the unfair practice and a desire to have the same standard applied across the board.[5]

In addition to increasing fairness, aligning the PTAB claim construction standard with that used in civil actions is expected to lead to greater uniformity and predictability in the patent system. One study found that nearly 87% of patents at issue in an AIA trial proceeding were also the subject of a district court litigation, revealing significant overlap between the forums, and supporters of the new claim construction standard believe that it will help increase judicial efficiency overall.[6] Because the proposed rule change will also include a provision that the PTAB will consider any prior claim construction determination concerning a term of the involved claim in a civil action or ITC proceeding that is timely made of record in an IPR, PGR, or CBM proceeding, claim construction before the PTAB will be streamlined and more predictable for all parties involved. This proposed approach ultimately brings the AIA administrative proceedings closer to what Congress intended: quick and cost-effective alternatives to litigation.

While this shift in claim construction standards at the PTAB may impact strategy decisions and forum selection for both litigants and petitioners, and may render decisions like the Supreme Court’s upholding of the BRI standard at the PTAB in Cuozzo v. Lee obsolete, the change is not expected to drastically affect validity determinations. Although the new standard is narrower, practitioners find that BRI and the Phillips standards do not differ significantly in most instances, and a change to Phillips would not necessarily mean that any more patents will be upheld at the PTAB.[7] What will be interesting is the effect a PTAB claim construction may have on co-pending district court litigation.  Under B&B Hardware v. Hargis Industries, issue preclusion may apply.  Should the new standard go into effect, issue preclusion will very likely be an important variable that patent owners and petitioners consider as they develop their strategies.


[1] Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 90 at 21221-21226 (May 9, 2018), available at https://www.gpo.gov/fdsys/pkg/FR-2018-05-09/pdf/2018-09821.pdf .

[2] 37 C.F.R. 42.100(b); 37 C.F.R. 42.200(b); 37 C.F.R. 42.300(b).

[3] Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005)(en banc) (“word of a claim are generally given their ordinary and customary meaning,” which 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.”).

[4] Id. at 1317.

[5] Matthew Bultman, USPTO Wants AIA Claim Construction to Match District Court (May 8, 2018), available at https://www.law360.com/ip/articles/1041426/uspto-wants-aia-claim-construction-to-match-district-court?nl_pk=5322242a-d1b4-4b1f-9c03-364988e91a34&utm_source=newsletter&utm_medium=email&utm_campaign=ip.

[6] Saurabh Vishnubhakat, Arti K. Rai & Jay P. Kesan, Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45 (2016), available at https://ssrn.com/ abstract= 2731002.

[7] Matthew Bultman, The Impact of Changing the PTAB’s Claim Construction Test (April 23, 2018), available at https://www.law360.com/articles/1036401/the-impact-of-changing-the-ptab-s-claim-construction-test.