The United States Patent and Trademark Office (“USPTO”) has published its new Final Rule on the standard of review used in construing challenged patent claims in the Patent Trial and Appeal Board (“PTAB”). Currently, the PTAB relies on the “broadest reasonable interpretation” (“BRI”) standard in construing challenged patent claims. However, the new rule directs the PTAB to rely on the person of ordinary skill in the art (“POSITA”) standard announced in the Federal Circuit’s landmark decision Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This standard will be used in Inter Partes Review (“IPR”), Covered Business Method Review (“CBM”), and Post-Grant Review (“PGR”) proceedings before the PTAB. The new rule also allows the PTAB “to consider” prior claim construction opinions by the courts and the United States International Trade Commission (“USITC”).
These changes apply to petitions filed on or after November 13, 2018. Thus, the new claim construction standard will not apply to cases already pending at the PTAB or those filed before that date. Therefore, parties seeking to file petitions using the current BRI standard must do so before November 13. It is sometimes thought that the BRI standard creates a broader claim construction that may be easier to invalidate. Consequently, there may be an uptick in the number of petitions filed with the PTAB in the next month to avoid the application of the POSITA standard.
The new rule received 374 mostly positive comments in response to its proposal in the USPTO’s May 9, 2018, Notice of Proposed Rulemaking. While some observers note that the POSITA standard is a more searching standard of review than the BRI standard, studies have indicated that the PTAB’s implementation of the BRI standard is no broader than the POSITA standard. Nonetheless, the new rule may lead to greater harmonization between the courts and the PTAB, creating greater consistency in decisions concerning challenged patent claims. Indeed, this change may reduce inconsistency between the courts and the PTO. This could increase predictability and certainty for parties, and may also result in district court judges granting more stays of litigation since the same standard of review will now apply in both proceedings. Of course, it remains to be seen whether courts and the PTAB will follow each other’s claim construction decisions.