Since the enactment of the America Invents Act in September 2012, the USPTO has evaluated a patent’s validity in post-grant proceedings1 with a broader claim construction standard than used by federal District Courts. The USPTO’s use of this broader standard may have contributed to the Patent Trial and Appeal Board’s (PTAB’s) tendency to invalidate patents more often than District Courts.

At present, the claim construction standard that is used in post-grant proceedings is as follows:

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.2

This standard for unexpired claims is often called the “broadest reasonable interpretation” (BRI) standard. According to the Manual of Patent Examining Procedure (MPEP),3 “[u]nder the broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.”4

Federal courts and the International Trade Commission (ITC) use a purportedly different claim construction standard for unexpired claims, known as the Phillips standard.

We have frequently stated that the words of a claim are generally given their ordinary and customary meaning. We have made clear, moreover, that the ordinary and customary meaning of a claim term 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.5

Federal Court decisions and PTAB guidance provide relatively little insight on whether a meaningful difference exists between the BRI and Phillips standards. Under both standards, claims are construed in light of the specification as understood by a person of ordinary skill in the art. In fact, Judge Paul Michel, former Chief Judge of the Court of Appeals for the Federal Circuit, believes that the only meaningful difference is as follows:

[T]he putative claim construction standard between courts and the Patent Office is the same—with the one minor difference being that courts may apply disclaimers made by a patent owner during prosecution, even if the claims do not supply a textual hook for such a disclaimer, while the Patent Office properly forces an applicant or Patent Owner to put the explicit text in the claims if it is not already there.6

Nonetheless, the Federal Circuit believes that there is an outcome-determinative difference in the two standards:

[C]laim construction in IPRs is not governed by Phillips. Under Cuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips.7

If we were tasked with reviewing the [PTAB’s] construction according to Phillips, and in fact if the Board had applied the Phillips standard rather than the broadest reasonable construction, this case would be straight-forward. [Appellant’s] construction is the only construction of the term consistent with the use of the same term throughout the specification. But this case is much closer under the broadest reasonable interpretation standard given the ordinary meaning attributable to the term at issue.8

Proposed Rule

On May 9, 2018, the USPTO issued a Notice of Proposed Rulemaking that proposes to change the claim construction standard for unexpired claims in post-grant proceedings from the BRI standard to the Phillips standard.9 Specifically, the proposed rule would amend 37 C.F.R. §§ 42.100, 42.200, and 42.300 as follows.

[A] claim of a patent, or a claim proposed in a motion to amend, “shall be construed using the same claim construction standard that would be used to construe such a claim in a civil action to invalidate a patent 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.”10

The USPTO states that, under this new rule, “[t]he Office would apply the principles that the Federal Circuit articulated in Phillips and its progeny.”11

Even more, the USPTO states that “consistent with Phillips and its progeny, the doctrine of construing claims to preserve their validity would apply to AIA trials.”12 It is not clear how this would affect, or be affected by, the PTAB’s evidentiary standard. Federal courts presume that patent claims are valid, and thus require clear and convincing evidence (the highest evidentiary standard in civil disputes) before invalidating a patent. The PTAB, however, requires only a preponderance of evidence and, therefore, does not presume that patent claims are valid.

The USPTO proposed also that “[a]ny 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 . . . proceeding will be considered.”13 The notice does not define what constitutes a “timely” motion.

Policy Reasons

According to the USPTO, “[b]ecause the BRI standard potentially reads on a broader universe of prior art than does the Phillips standard, a patent claim could be found unpatentable in an AIA trial on account of claims scope that the patent owner would not be able to assert in an infringement proceeding.”14 In short, the USPTO believes that the differing standards cause the shield to be weaker than the sword, and thus makes patent rights less reliable for patent owners.

Additionally, the USPTO believes that the shift from BRI to Phillips would increase judicial efficiency of patent disputes in all forums since, according to one study, “86.8% of patent at issue in AIA trial proceedings also have been the subject of litigation in the federal courts.”15

Practice Tips: Submitting Comments and Preparing for the New Rule

This is not a promulgated rule, but merely a notice of a proposed rule.16 According to the notice, the USPTO will be accepting comments until July 9, 2018.17 Comments should be sent by email to [email protected] or over the Federal eRulemaking Portal at The USPTO requests that all comments include the docket number PTO-P-2018-0036.19 Be advised that all submitted comments will be made publicly available at and on the Federal eRulemaking Portal.20

For those who are closely tracking this development, it is important to keep in mind that the USPTO is not obligated to promulgate this new rule within a specific period of time after the comment period ends on July 9, 2018. In fact, the USPTO is not obligated to promulgate this rule at all. Also, it may promulgate a new rule that is different than the one proposed in this notice. In short, nothing is certain at this point.

This being said, any retroactive application of this new rule may be useful during the window of time in which one may “timely” submit to the PTAB a claim construction from previous federal litigation. Moreover, while arguing invalidity contentions, petitioners and patent owners should keep the above described policy concerns in mind and not assume that a BRI type of argument will apply for either preserving validity or seeking invalidity.