Todd Langford, Esq.
A petition for
Inter Partes Review (IPR) seeks to invalidate a patent as anticipated or obvious over prior patents or publications. Effective November 13, 2018, The United States Patent and Trademark Office (USPTO) will begin using the same standard for claim construction in IPR proceedings as that used by the federal courts. Currently, the Patent Trial and Appeal Board (PTAB) uses a “broadest reasonable interpretation” standard for claim construction in IPR proceedings. Under the new rules published October 11, 2018, the Patent Trademark and Appeal Board (PTAB) will now use the “person having ordinary skill in the art” standard for claim construction articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
In theory, this rule change makes it incrementally harder to invalidate a patent challenged through IPR proceedings. For IPR petitions filed on or after November 13, 2018, the PTAB will no longer give terms their broadest reasonable interpretation, but rather the meaning the term would have to a person having ordinary skill in the art at the time of invention. While this change may not make a difference in all cases, some patents may be found valid under the new standard even though invalid under the old broadest reasonable interpretation standard. Those looking to invalidate a patent may benefit from filing their petitions before November 13, 2018 to avoid this (arguably) different standard.
More importantly, however, may be the indication that the PTAB will consider prior claim constructions by the courts (and even the international trade commission). Patent owners will soon be able to take advantage of prior claim constructions when defending their patents before the PTAB, and fight back against infringers attempting to re-litigate the same issues. This harmonized claim construction standard will hopefully create more consistent opinions and results in contested patent cases before the PTAB and federal courts.
*The information in this article is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Greenspoon Marder LLP or the individual author(s), nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.
About Greenspoon Marder
Greenspoon Marder is a national full-service business law firm with 240 attorneys and 26 locations across the United States. We are ranked amongst
American Lawyer’s Am Law 200, as one of the top law firms in the U.S. since 2015. Since our inception in 1981, our firm has been committed to providing excellent client service through our cross-disciplinary, client-team approach. Our mission is to understand the challenges that our clients face, build collaborative relationships, and craft creative solutions designed and executed with long-term strategic goals in mind. We serve Fortune 500, middle-market public and private companies, start-ups, emerging businesses, individuals and entrepreneurs nationwide.
Natalie Villanueva, Director of Marketing
954.333.4308 | firstname.lastname@example.org
This Greenspoon Marder LLP Client Alert is issued for informational purposes only and is not intended to be construed or used as general legal advice nor a solicitation of any type. Please contact the author(s) or your Greenspoon Marder LLP contact if you have any questions regarding the currency of this information. The hiring of a lawyer is an important decision. Before you decide, ask for written information about the lawyer’s legal qualifications and experience.