Post Grant Proceedings to Apply Phillips Claim Construction Standard to All Petitions Filed On or After November 13, 2018

Written by: Christopher H. Blaszkowski, Jacob F. Blumert

On October 10, 2018, the U.S. Patent and Trademark Office issued a final rule changing the claim construction standard applied during inter partes review, post-grant review, and covered business method proceedings (collectively, “AIA proceedings”).  The final rule revises the claim construction standard in AIA proceedings from the previously applied broadest reasonable interpretation standard (“BRI”) to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) applied by federal courts.  The final rule quickly followed a May 3, 2018 Notice of Proposed Rulemaking by the United States Patent and Trademark Office.

Pursuant to the final rule, the Patent Trial and Appeal Board (“PTAB”) is instructed to apply the claim construction standard specified in Phillips and its progeny during AIA proceedings.  For some cases, this change could impact petitioners, as the BRI standard had at least the potential to sweep in more prior art than the Phillips standard.  In addition, the final rule states that the PTAB will consider any prior claim construction determination in a civil action or proceeding before the International Trade Commission if that determination is timely filed in the record.  The new standard of claim construction will apply to all petitions for AIA proceedings filed on or after November 13, 2018.