By: 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.
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