CHANGES TO THE CLAIM CONSTRUCTION STANDARD FOR INTERPRETING CLAIMS IN TRIAL PROCEEDINGS BEFORE AND AFTER THE PATENT TRIAL AND APPEAL BOARD FINAL RULES
Discussion of Specific Rules:
Title 37 of the Code of Federal Regulations, part 42, is amended as follows: Sections 42.100, 42.200, and 42.300: Sections 42.100(b), 42.200(b), and 42.300(b) are amended to replace the first sentence with the following:
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 the claim in a civil action 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.
This revision replaces the BRI standard for construing unexpired patent claims and proposed substitute claims during an IPR, PGR, or CBM proceeding with the same claim construction standard that is used in federal courts and ITC proceedings.
- As discussed above, the Office will apply the standard used in federal courts and the ITC, which construe patent claims in accordance with the principles that the Federal Circuit articulated in Phillips.
- This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
- The Office will construe patent claims and proposed substitute claims based on the record of the IPR, PGR, or CBM proceeding, taking into account the claim language itself, specification, and prosecution history pertaining to the patent, as well as relevant extrinsic evidence, all as in prevailing jurisprudence of Article III courts.
- The Office will take into account the prosecution history that occurred previously in proceedings at the Office prior to the IPR, PGR, or CBM proceeding at issue, including in another AIA proceeding, or before an examiner during examination, reissue, and reexamination.
- As in a district court proceeding, the parties should point out the specific portions of the specification, prosecution history, and relevant extrinsic evidence they want considered, and explain the relevancy of any such evidence to the arguments they advance.
- Each party bears the burden of providing sufficient support for any construction advanced by that party.
The Office has considered using different claim construction standards for IPR, PGR, and CBM proceedings, but, for consistency, the Office adopts the same claim construction to be applied in all IPR, PGR, and CBM proceedings.
- By maintaining consistency among the various proceedings, the integrity, predictability and reliability of the patent system is thus enhanced.
Sections 42.100(b), 42.200(b), and 42.300(b) are also amended to state that ‘‘[a]ny prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the [ITC], that is timely made of record in the . . . proceeding will be considered.’’
- Under this provision, the Office will consider any prior claim construction determination in a civil action or ITC proceeding if a federal court or the ITC has construed a term of the involved claim previously using the same standard, and the claim construction determination has been timely made of record in the IPR, PGR, or CBM proceeding.
Sections 42.100(b), 42.200(b), and 42.300(b) are further amended by deleting the second and third sentences, eliminating the procedure for requesting a district court-type claim construction approach for a patent expiring during an IPR, PGR, or CBM proceeding.
- Such a procedure is no longer needed because the Office will use the same claim construction standard that is used in federal courts and ITC proceedings uniformly for interpreting all claims in an IPR, PGR, or CBM proceeding.
