In a final rule published in the Federal Register, the United States Patent and Trademark Office (USPTO) announced that it is replacing the “broadest reasonable interpretation” standard with the federal court claim construction standard for IPRs, PGRs, and CBMs. This new claim construction standard is consistent with that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and requires that the claim be given the “ordinary and customary meaning” it would have to “a person of ordinary skill in the art … at the time of the invention.” Under this final rule, the PTAB will also take into consideration prior claim construction determinations made in federal proceedings, or in proceedings before the International Trade Commission (ITC), if that claim construction is made of record in a timely manner in the related IPR, PGR, or CBM. These changes were implemented after publication of a Notice of Proposed Rulemaking (NPRM) on May 9, 2018, which received over 300 comments, the significant majority of which supported the change. The new standard will be applicable to petitions filed on or after November 13, 2018,
Patent owners have long fought for conforming the claim construction standards across the different forums, including in an unsuccessful appeal before the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). With the narrower Phillips standards being viewed as favoring patent owners, this new standard will likely be welcomed by patent owners as more favorable to their interests.
The discrepancy in standards allowed litigants to argue that the claims should be interpreted differently in separate proceedings, and leverage the difference for strategic benefits. For example, accused infringers could argue the narrower claim construction standard for infringement purposes in federal court, but a broader claim construction for invalidation purposes in proceedings before the PTAB. Aligning the standards reduces this leverage, and petitioners should consider whether there is the risk of an adverse outcome from adopting different claim constructions in related proceedings, especially where the final rule allows the PTAB to take into consideration prior claim construction determinations.
The possibility of unfavorable claim construction decisions from co-pending litigation may also be a factor. Petitioners have to take into account when deciding on the timing of the petition, and favor early filing of petitions following initiation of a litigation.