CHANGES TO THE CLAIM CONSTRUCTION STANDARD FOR INTERPRETING CLAIMS IN TRIAL PROCEEDINGS BEFORE AND AFTER THE PATENT TRIAL AND APPEAL BOARD FINAL RULES
Claim Construction Standard:
Prior to this rulemaking, the PTAB construed unexpired patent claims and proposed substitute claims in AIA proceedings using the BRI standard.
- The BRI standard differs from the standard used in federal courts and the ITC, which construe patent claims in accordance with the principles that the United States Court of Appeals for the Federal Circuit articulated in Phillips.
Although the BRI standard is consistent with longstanding agency practice for patents in examination, the fact that the Office uses a claim construction standard in AIA proceedings that is different from that used by federal courts and the ITC means that decisions construing the same or similar claims in those fora may be different from those in AIA proceedings and vice versa.
- Minimizing differences between claim construction standards used in the various fora will lead to greater uniformity and predictability of the patent grant, improving the integrity of the patent system.
- In addition, using the same standard in the various fora will help increase judicial efficiency overall.
- One study found that 86.8% of patents at issue in AIA proceedings also have been the subject of litigation in the federal courts, and the Office is not aware of any change in this percentage since this study was undertaken.
- The high percentage of overlap between AIA proceedings and district court litigation favors using a claim construction standard in AIA proceedings that is the same as the standard used by federal courts and the ITC.
- The scope of an issued patent should not depend on the happenstance of which court or governmental agency interprets it, at least as far as the objective rules go.
- Employing the same standard for AIA proceedings and district courts improves uniformity and predictability as it allows the different fora to use the same standards in interpreting claims.
In addition, having AIA proceedings use the same claim construction standard that is applied in federal courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA proceedings.
- According to some patent owners, the same claim construction standard should apply to both a validity (or patentability) determination and an infringement determination.
- Because the BRI standard potentially reads on a broader universe of prior art than does the Phillips standard, a patent claim 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.
- For example, even if a competitor’s product would not be found to infringe a patent claim (under the Phillips standard) if it was sold after the patent’s effective filing date, the same product nevertheless could potentially constitute invalidating prior art (under the BRI standard) if publicly sold before the patent’s effective filing date.
- As noted by one study, the possibility of differing constructions for the same claim term is troubling, especially when claim construction takes place at the same time in parallel district court proceedings and USPTO proceedings.
The Office’s goal is to implement a balanced approach, providing greater predictability and certainty in the patent system.
- The Office has carefully considered the submitted comments in view of ‘‘the effect of [the] regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to complete timely the proceedings in promulgating regulations.’’
- The Office shall prescribe regulations establishing and governing IPR, PGR, and CBM proceedings and the relationship of such reviews to other proceedings, including civil actions under 35 U.S.C. 282(b).
- The Office must prescribe regulations ‘‘setting forth the standards for the showing of sufficient grounds to institute a review.’’
- Congress intended these administrative trial proceedings to provide ‘‘quick and cost effective alternatives’’ to litigation in the courts.
- The claim construction standard could be outcome determinative.
- Using the same claim construction standard as the standard applied in federal courts would ‘‘seek out the correct construction—the construction that most accurately delineates the scope of the claim invention—under the framework laid out in Phillips.’’
In this final rule, the Office revises the rules to provide that a patent claim, 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 rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
- This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.
Under the amended rules as adopted in this final rule, the Office will construe patent claims and proposed substitute claims in an IPR, PGR, or CBM proceeding by taking into account the claim language itself, the specification, the prosecution history of the patent, and extrinsic evidence, among other things, as briefed by the parties.
- Having the same claim construction standard for both the original patent claims and proposed substitute claims will reduce the potential for inconsistency in the interpretation of the same or similar claim terms.
- Additionally, using the federal court claim construction standard is appropriate because, among other things, amendments proposed in AIA proceedings are required to be narrowing, are limited to a reasonable number of substitute claims, and are required to address patentability challenges asserted against the original patent claims.
- Using the same claim construction standard for interpreting both the original and amended claims also avoids the potential of added complexity and inconsistencies between PTAB and federal court proceedings, and this allows, among other things, the patent owner to understand the scope of the claims and more effectively file motions to amend.
- Additionally, having the same construction will reduce the potential for situations where a claim term of an original patent claim is construed one way under the federal court standard and yet the very same or similar term is construed a different way under BRI where it appears in a proposed substitute claim.
The Office will apply the standard used in federal courts, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is 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.
- For example, claim construction begins with the language of the claims.
- The ‘‘words of a claim are generally given their ordinary and customary meaning,’’ which is ‘‘the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.’’
- The specification is ‘‘the single best guide to the meaning of a disputed term and . . . acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.’’
- Although the prosecution history ‘‘often lacks the clarity of the specification and thus is less useful for claim construction purposes,’’ it is another source of intrinsic evidence that can ‘‘inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.’’
- Extrinsic evidence, such as expert testimony and dictionaries, may be useful in educating the court regarding the field of the invention or helping determine what a person of ordinary skill in the art would understand claim terms to mean.
- However, extrinsic evidence in general is viewed as less reliable than intrinsic evidence.
Additionally, to the extent that federal courts and the ITC apply the doctrine of construing claims to preserve their validity as described in Phillips, the Office will apply this doctrine in those rare circumstances in AIA proceedings.
- As the Federal Circuit recognized in Phillips, this doctrine is ‘‘of limited utility.’’
- Federal courts have not applied that doctrine broadly and have ‘‘certainly not endorsed a regime in which validity analysis is a regular component of claim construction.’’
- The doctrine of construing claims to preserve their validity has been limited to cases in which ‘‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.’’
- Moreover, the Federal Circuit ‘‘repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity.’’
When construing claims in IPR, PGR, and CBM proceedings, the Office will take into account the prosecution history that occurred previously at the Office, including before an examiner during examination, reissue, reexamination, and prior AIA proceedings.
- This will also include prosecution before an examiner in a related application where relevant and any argument made on appeal of a rejection before the grant of the patent for which review is sought, as those arguments are before the examiner when the decision to allow an application is made.
During an AIA proceeding, the patent owner may file a motion to amend an unexpired patent to propose a reasonable number of substitute claims, but the proposed substitute claims ‘‘may not enlarge the scope of the claims of the patent or introduce new matter.’’
- As discussed above, and among other things, having the same claim construction standard for both the original patent claims and proposed substitute claims will reduce the potential for inconsistency in the interpretation of the same or similar claim terms.
The Office does not expect that this rule will result in direct costs to applicable entities.
- The Office’s understanding is informed partly by the PTAB’s experience in applying Phillips in some AIA trials (as noted herein, PTAB has used Phillips for AIA trials concerning expired patents since 2012 and for AIA trials concerning soon-tobe-expired patents since 2016).
- In the PTAB proceedings that are currently conducted using the Phillips standard, PTAB applies the same procedures— including the same page limits and other briefing requirements—as in the PTAB proceedings that use the BRI standard.
- In other words, the PTAB currently uses the same regulations, procedures, and guidance for both types of AIA trials: i.e., for both the AIA trials that use the BRI standard as well as those AIA trials (concerning expired and soon-to-expire patents) that use the Phillips standard.
- These are found in the Code of Federal Regulations (at 37 CFR part 42) and on USPTO’s website, including at the following page where USPTO has links to the relevant regulations as well as the Trial Practice Guide that informs the public of standard practices before PTAB during AIA trials: https://www.uspto.gov/ patents-application-process/patenttrial-and-appeal-board/resources.
- Because these are used now for trials under both BRI and Phillips, USPTO does not need to revise these procedures and guidance to implement the change set forth in this final rule, and does not need to make regulatory changes other than those set forth in this final rule.
Moreover, PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than parties in AIA proceedings under BRI.
- The USPTO’s experience is that arguments under Phillips are not more complicated or more lengthy than arguments under the BRI standard.
- Rather, both standards are familiar to patent practitioners appearing before the USPTO and district courts.
- Consequently USPTO expects that these proceedings utilizing the Phillips standard will operate procedurally in much the same way as BRI proceedings using the BRI standard, that they will cost USPTO and parties no more to conduct, and that they will be completed within the statutory deadline.
- In sum, the direct result of USPTO changing the claim construction standard argued in some AIA trials from one well-known standard to another well-known (as noted, a standard already used in some AIA trials) will not have direct economic impacts.
Given the fact that 86.8% of PTAB proceedings have been the subject of litigation in Federal court, where parties are already using the Phillips standard, the Office reasonably anticipates expanding the use of the Phillips standard to all AIA trials should result in parties realizing some efficiency in the legal work required for their PTAB proceedings.
Not only will applying the federal court claim construction standard in AIA proceedings lead to greater consistency with the federal courts and the ITC, where such consistency will lead to greater certainty as to the scope of issued patent claims, but it will also help achieve the goal of increasing judicial efficiency and eliminate arguments relating to different standards across fora.
The Office has not increased the page limits of briefs for the AIA trials that currently use Phillips, and the paperwork burden associated with briefings for trials is covered by the current information collections based on the current page limits, thus the overall cost burden on respondents is not expected to change.
It is possible that this rule may produce a slight reduction in the indirect costs as a result of improving efficiency by reducing wasted effort in conducting duplicative efforts in construing claims.
For example, in some cases there may be savings in legal fees because the parties may be able to leverage work done in the district court.
Using the same claim construction standard across the fora would increase efficiency, as well reduce cost and burden because parties would only need to focus their resources to develop a single set of claims construction arguments.
In summary, given the Office’s experience with existing PTAB proceedings currently conducted using the Phillips standard and the efficiencies that may be realized by having consistency between all AIA trials and the standard use in federal court litigation, the Office does not expect that this rule change will impose costs on parties.
