USPTO Proposes Rulemaking to Require the PTAB to Construe Claims According to Phillips in AIA Trials

Written by: Christopher H. Blaszkowski & Alyssa R.M. Pugh

The USPTO has issued a notice of proposed rulemaking concerning its intention to replace the current “broadest reasonable interpretation” (BRI) claim construction standard in AIA trials with the “ordinary and customary meaning” standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).  The move to a Phillips standard would subject unexpired patent claims and claims proposed in a motion to amend in AIA trials to construction in accordance with their “ordinary and customary meaning … as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.”  Previously, the PTAB had only employed the Phillips standard in AIA trials to construe the claims of expired patents.  The USPTO also indicated that the proposed rules would apply the Phillips doctrine of “construing claims to preserve their validity.”

This notice of rulemaking comes nearly two years after the Supreme Court affirmed the PTAB’s use of the BRI in AIA trials.  Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2135 (2016) (concluding that the “nature and purpose of inter partes review does not unambiguously require the Patent Office to apply one particular claim construction standard.”).  The USPTO acknowledged that its current BRI standard could lead to unfair and disparate outcomes between AIA proceedings and federal district court or ITC proceedings.  The proposed change signals the USPTO’s desire to impart consistency in claim construction between Article III court proceedings and those carried out before the Patent Trial and Appeal Board (PTAB).  “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.”

If past notice and rulemaking by the USPTO is any measure, it may take several years for the promulgation of a new claim construction rule.  The last major rule change (permitting testimonial evidence to be submitted by Patent Owners in Preliminary Responses) took approximately two years from the notice and comment period to the final rule.