The PTAB's New Claim Construction Standard: Will the Real Impact Please Stand Up

The USPTO has long applied the BRI standard in proceedings involving issued patents, including reexaminations, reissues, and AIA trials. Federal courts, however, use the "narrower" Phillips standard. While maintaining the BRI standard for reissues and reexaminations, the USPTO has chosen to break with tradition for new AIA trials in order to "[m]inimiz[e] differences between claim construction standards used in the various fora [to provide] greater uniformity and predictability of the patent grant, [as well as] help increase judicial efficiency overall." 83 Fed. Reg. 51,342 (Oct. 11, 2018).

Effect on Rulings

One significant question arising from this change concerns the effect that a "narrower" claim construction standard will have on the patentability rulings. A less obvious question considers the effect that using the identical standard will have on the interplay between AIA trials and parallel actions in district courts.

As to the first question, the Phillips standard mandates that claim terms be given their ordinary meaning in the eyes of a person of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 ("the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention."). Yet, even under the BRI standard "words of the claim must be given their plain meaning, … [which] means the ordinary and customary meaning given to the term by those of ordinary skill in the art." MPEP §2111.01. Given the similarity between the two standards, existing case law acknowledges that "[t]he broadest reasonable interpretation of a claim term may be the same as … the construction of a term under the Phillips standard. But it cannot be narrower." Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. Appx. 864, 869 (Fed. Cir. 2014); In re: CSB-System International, Inc., 832 F. 3d 1335, 1341-42 (Fed. Cir. 2016) (finding that the claim construction under the Phillips standard no different than the construction under the BRI). The USPTO's own commentary telegraphs the expectation that the new standard could result in the same claim construction in "many cases." 83 Fed. Reg. 51,348 (Oct. 11, 2018).

History of Claim Given More Weight

The text of the rule itself indicates that the most significant differences include putting more weight on "the prosecution history pertaining to the patent" and "[a]ny prior claim construction determination" in a federal court. 37 C.F.R. §42.100. These considerations, along with others, will result in narrower constructions in some instances. But a narrower construction alone need not be result determinative. A narrower construction may only affect the ultimate determination of patentability in an inter partes review (IPR) if the narrower construction renders the claimed subject matter patentability distinct from the prior art in a way that a somewhat broader construction would not. See, e.g., Cisco Systems, Inc. v. AIP Acquisition, LLC, IPR2014-00247 (2014), paper 20, at 3 (finding the difference in standard not to be result determinative); Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246, Paper No. 73, pp. 2-3, 5 (P.T.A.B. May 23, 2016) (adopting the Phillips standard on remand and reversing the earlier finding of unpatentability reached based on application of the BRI standard).