MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

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Question:

What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”?

Answer:

In the first final rule, the Office changed the existing rules to, among other things:

1. 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
2. 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:

1. Allow new testimonial evidence to be submitted with a patent owner’s preliminary response;
2. 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;
3. replace page limits with word count limits for major briefing; and
4. add a Rule 11-type certification for papers filed in a proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

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.