This morning, the US Patent and Trademark Office issued its final rule implementing district court-style claim construction at the PTAB, replacing the “broadest reasonable interpretation” standard.  The official text of the rule will publish in the Federal Register on October 11, 2018, in final form.  The new rule is not retroactive and will apply to petitions filed on or after the effective date of the final rule, which is Nov. 13, 2018 (i.e., the first federal business day after 30 days from publication). [Note: 30 days from an October 11, 2018 publication falls on Saturday, November 10, 2018, but the PTO’s press release [PDF] reports the effective date as November 13, 2018.]

As noted in the unpublished text, “[t]his final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘AIA’) providing for trials before the Office, by replacing the [broadest reasonable interpretation] standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).  The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.  Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.  This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, [PGR] or CBM proceeding.”  Ppg. 2-3.

It appears that the new rule will be part of 37 C.F.R. 42.100(b) (IPRs), 42.200(b) (PGRs), and 42.300(b) (CBMs).  See ppg. 82-84.

As of November 13, 2018, 37 CFR 42.100(b), for example, will read:

“(b) In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.  Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”

The current (and soon to be former) text reads:

“(b) A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. A party may request a district court-type claim construction approach to be applied if a party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition. The request, accompanied by a party’s certification, must be made in the form of a motion under § 42.20, within 30 days from the filing of the petition.”

The Patent Trial and Appeal Board issued two decisions in TC 1600 during the week of August 27-31, 2018.  The first decision denied institution of an IPR petition filed by Hologic Inc. (Hologic) against bioMérieux, Inc. (bioMérieux).  The second decision denied institution of a PGR petition filed by Rimfrost AS (Rimfrost) against Aker Biomarine Antarctic AS (Aker).  The decisions are as follows: Continue Reading PTAB Tech Center 1600 Round-Up: Week of August 27-31, 2018

On May 8, 2018, the United States Patent and Trademark Office (USPTO) announced a proposed rulemaking to change the current claim construction standard used in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).  If approved, this change would align the standard applied in claim construction proceedings in the PTAB with the standard applied in District Courts and the International Trade Commission (ITC).  Currently, the PTAB interprets patent claims according to their broadest reasonable interpretation, while District Courts and the ITC apply the ordinary and customary meaning standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  This proposed rule would change the claim construction standard applied in all pending IPR, PGR, and CBM proceedings, and not just newly-filed petitions. Continue Reading PTAB Proposes to Adopt the Phillips Standard for Claim Construction in Post-Grant Proceedings