CHANGES TO THE CLAIM CONSTRUCTION STANDARD FOR INTERPRETING CLAIMS IN TRIAL PROCEEDINGS BEFORE AND AFTER THE PATENT TRIAL AND APPEAL BOARD FINAL RULES
Summary:
The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).
- In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
- 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 also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.
Dates:
Effective Date: The changes in this final rule take effect on November 13, 2018.
Applicability Date: This rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.
Executive Summary Purpose:
This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).
The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny.
Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.
This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, PRG or CBM proceeding.
Summary of Major Provisions:
The Office is using almost six years of historical data, user experiences, and stakeholder feedback to further shape and improve PTAB proceedings, particularly IPR, PGR, and CBM proceedings (‘‘AIA proceedings’’).
- As part of the Office’s continuing efforts to improve AIA proceedings, the Office now changes the claim construction standard applied in AIA proceedings involving unexpired patent claims and substitute claims proposed in a motion to amend.
- The Supreme Court of the United States has endorsed the Office’s ability to choose an approach to claim construction for AIA proceedings.
In the notice of proposed rulemaking, the Office sought comments on the Office’s proposed changes to the claim construction standard used for interpreting unexpired patent claims and substitute claims proposed in a motion to amend.
- Upon careful consideration of the public comments, taking into account the effect of the rule changes on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete instituted proceedings, the Office adopts the proposed rule changes (with minor deviations in the rule language, as discussed below).
- Any deviations from the proposed rule are based upon a logical outgrowth of the comments received.
In particular, this final rule fully adopts the federal court claim construction standard, in other words, the claim construction standard that is used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips and its progeny.
- This rule states that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
- The claim construction standard adopted in this final rule also is consistent with the same standard that the Office has applied in interpreting claims of expired patents and soon-to-be expired patents.
- This final rule also revises the rules to add that the Office will consider any prior claim construction determination concerning a term of the claim that has been made in a civil action, or a proceeding before the ITC, if that prior claim construction is timely made of record in an AIA proceeding.
Background:
On September 16, 2011, the AIA was enacted into law and within one year, the Office implemented rules to govern Office practice for AIA proceedings, including IPR, PGR, CBM, and derivation proceedings.
- Additionally, the Office published a Patent Trial Practice Guide to advise the public on the general framework of the regulations, including the procedure and times for taking action in each of the new proceedings.
Previously, in an effort to gauge the effectiveness of the rules governing AIA proceedings, the Office led a nationwide listening tour in April and May of 2014.
- During the listening tour, the Office solicited feedback on how to make AIA proceedings more transparent and effective by adjusting the rules and guidance to the public where necessary.
- To elicit even more input, in June of 2014, the Office published a Request for Comments in the Federal Register and, at public request, extended the period for receiving comments to October 16, 2014.
- The Request for Comments asked seventeen questions on ten broad topics, including a general catchall question, to gather public feedback on any changes to AIA proceedings that might be beneficial.
- At least one question was directed to the claim construction standard.
Upon receiving comments from the public and carefully reviewing the comments, the Office published two final rules in response to the public feedback on this request for comments.
In the first final rule, the Office changed the existing rules to, among other things:
- Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and
- increase the page limit for petitioner’s reply to patent owner’s response by ten pages.
In the second final rule, the Office changed the existing rules to, among other things:
- Allow new testimonial evidence to be submitted with a patent owner’s preliminary response;
- allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision;
- replace page limits with word count limits for major briefing; and
- add a Rule 11-type certification for papers filed in a proceeding.
The Office last issued a rule package regarding AIA proceedings on April 1, 2016.
- This final rule was based on comments received during a comment period that opened on August 20, 2015 (only a month after the Federal Circuit’s July 2015 decision in the appeal of the first IPR filed, Cuozzo Speed Technologies, LLC v. Lee) and that closed on November 18, 2015.
- At that time, the appeal of the Federal Circuit’s decision in Cuozzo had not yet been decided by the Supreme Court (it was decided on June 20, 2016).
- Due to the life cycle of AIA trial proceedings and appeals, the comments received during this 2015 comment period came when few Federal Circuit decisions had been issued, and there had been no decisions on AIA appeals from the Supreme Court.
- From 2016 to present there has been a six-fold increase in the number of opinions relating to AIA proceedings issued by the Federal Circuit as compared to the prior 2012–2015 time frame.
- Additionally, since the last rule package, the Office has continued to receive extensive stakeholder feedback requesting adoption of the district court claim construction standard for all patents challenged in AIA proceedings.
- Many of the comments are based on case law and data that was not available when the comments to the last rule package were received in FY 2015.
- Further, recent studies not available at the time of the 2016 rule package support the concerns expressed by stakeholders regarding the unfairness of using a different claim construction standard in AIA proceedings than that used by the district courts.
