In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials.

In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) standard for unexpired and proposed claims with the Phillips standard that is applied by district courts and the International Trade Commission (ITC).  The Patent Trial and Appeal Board already applies the Phillips standard to expired patent claims, which cannot be amended during AIA trials.

The Notice also proposes requiring the Board to consider prior district court or ITC claim construction determinations that are timely made of record in IPR, PGR, or CBM proceedings.

The Notice explains that the motivations for the change include:

  • increasing uniformity between the PTAB, district courts, and the ITC;
  • increasing judicial efficiency; and
  • reducing potential unfairness that could result from using an arguably broader standard in AIA trial proceedings.

Under the proposed approach, claim construction would begin with the language of the claims, which will be given the meaning the terms would have to a person of ordinary skill in the art as of the effective filing date of the relevant patent.  Keeping in mind that the specification is “the single best guide to the meaning of a disputed term and … acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication,” the prosecution history—of the challenged patent and related patents, during prior prosecution, reexamination, reissue, and AIA trials—would be considered as a source of intrinsic evidence that 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.”

Of particular note, “the doctrine of construing claims to preserve their validity would apply to AIA trials.”  While some critics may argue that this particular change to Board practice is inconsistent with the purpose of such validity trials, petitioners may see this as an opportunity to frame challenges to either invalidate the challenged claims or compel a narrow construction that preserves validity but precludes infringement.

Comments on the proposed changes may be submitted to PTABNPR2018@uspto.gov within 60 days of the Notice’s official publication on May 9.

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