On May 8, the U.S. Patent and Trademark Office issued proposed rule changes concerning claim construction practice at the PTAB. The Patent Office proposes changing the standard for construing claims of unexpired patents in AIA trial proceedings to be the same as the standard applied in district courts and the International Trade Commission (“ITC”).

Currently, the Patent Office interprets claims of unexpired patents under the “broadest reasonable interpretation” standard and expired patents under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The proposed rule change would require the PTAB in AIA trial proceedings to construe claims of both expired and unexpired patents under the Phillips standard.

In addition, the Patent Office proposes requiring PTAB panels to consider any prior claim construction in a parallel litigation or ITC proceeding:

The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding.

The Patent Office indicates that any proposed rule changes adopted in a final rule would be applied to “all pending” AIA trial proceedings before PTAB.

The Patent Office provides the following explanation for the proposed changes:

Minimizing differences between claim construction standards used in the various fora could lead to greater uniformity and predictability of the patent grant. In addition, using the same standard in the various fora could help increase judicial efficiency overall…. Thus, the high percentage of overlap between AIA trial proceedings and district court litigation favors using a claim construction standard in AIA trials that is consistent with the standard used by federal district courts and the ITC.

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Having AIA trial proceedings use the same claim construction standard that is applied in federal district courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings…. Because 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 claim scope that the patent owner would not be able to assert in an infringement proceeding.

In previous remarks, Director Iancu expressed a need to “carefully balance rights-holder’s and rights challenger’s interests” in AIA trial proceedings. The proposed rule changes appear to be in response to criticism that AIA trial proceedings are biased in favor of patent challengers. The Patent Office has requested input from the public on the proposed rule changes and on how the Patent Office should implement the changes if adopted.