On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB).

In particular, the USPTO is replacing the “broadest reasonable interpretation” standard (the BRI standard) with the claim construction standard used in federal courts as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its progeny (the Phillips standard). The new rule applies to inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method (CBM) patents proceedings. Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM. The final rule will be effective for IPR, PGR, and CBM petitions filed on or after November 13, 2018.

The BRI standard and the Phillips standard often lead to the same claim construction, for example, when the patent specification expressly defines a claim term. In other instances, claim construction under the BRI standard may read on a broader universe of prior art than the Phillips standard. As a result, claims interpreted under the BRI standard could potentially be found unpatentable in an AIA proceeding on account of claim scope that the patent owner would not be able to assert in an infringement proceeding. In the Final Rule, the USPTO stated the reasons for adopting the Phillips standard is to achieve greater predictability and consistency of the patent grant and harmonizing the claim construction standard used in the federal courts, ITC, and AIA proceedings. See p. 51342 of the Final Rule. The USPTO also commented that having the same claim construction standard also addresses the concern that potential unfairness could result from using a broader BRI standard. Id.

Because the BRI standard will continue to be applied to IPR, PGR, and CBM petitions filed before November 13, 2018, there may be more petitions filed with the PTAB in the weeks prior to the effective date of the final rule, as petitioners may seek to take advantage of the broader claim construction standard while they still can. Patent challengers in front of the PTAB should seek to understand the full implications of the new rule and the interplay between the PTAB, federal courts, and ITC.