On May 9, 2018, the United States Patent and Trademark Office (USPTO) released a proposed rule change regarding the future of claim construction during post grant proceedings at the USPTO. The press release indicated that all post grant proceedings such as the Inter Partes Review, Post Grant Review and Covered Business Methods will no longer use the “Broadest Reasonable Interpretation” (BRI) to determine the scope of the claims. Instead, the “ordinary and customary meaning” which is used during litigation in federal courts would be used. This is a much better standard for patent owners because it is harder to invalidate a patent under the new standard.

This policy change is disadvantageous to alleged infringers. Inter Partes Review and other post grant proceedings allowed alleged infringers to use a broad definition for the claims to invalidate the patent claims being asserted against them through the post grant proceedings. Using a broad definition of the claim terms under the broadest reasonable interpretation standard increased the odds that a prior art reference would anticipate or make obvious the patent claims, and thus invalidate the patent claims. Not after the rule change comes into effect.

With the proposed rule change, for an alleged infringer to invalidate a claim in federal courts, the claims would be given their “ordinary and customary meaning,” not the broadest reasonable interpretation. As such, during litigation in federal courts, it would be significantly more difficult to invalidate the patent claim. This distinction between the broadest reasonable interpretation and the ordinary and customary meaning was a significant benefit to alleged infringers.

I’ve written a number of articles that highlight the benefits of the broadest reasonable interpretation standard for alleged infringers. Here are a few:

Related articles:

A summary of the proposed rule by the USPTO is as follows:

The United States Patent and Trademark Office (“USPTO” or “Office”) proposes changes to the claim construction standard for interpreting claims in inter partesreview (“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 proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding.

The policy change is not in effect at this moment. Review the published proposed rule Changes to Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board . I will update this blog post as developments arise. You can provide comment on the proposed rule till July 9. Write to [email protected] to submit your comments. The Patent Office will formalize the proposed rules and take into consideration the public’s comments.

The USPTO stated several rationales for the proposed rule change:

Greater uniformity and predictability of the patent grant
Increase judicial efficiency
Address concerns of unfairness between the BRI and ordinary and customary meaning standards

The stated goal for the policy change is to more closely align the interpretation used by the PTAB in post grant proceedings to the claim interpretation used in federal courts or the International Trade Commission. The proposed rules indicate that the goal is to use the ordinary and customary meaning of a claim to determine validity after the patent has granted.

In my opinion, this greatly reduces the attractiveness of Inter Partes Review, Post Grant Review and Covered Business Methods review before the Patent Trial and Appeal Board. I expect that the number of petitions filed at the USPTO may go down but only time will tell after the proposed rule change goes into effect. There still are benefits to post grant proceeding compared to litigation. One of them being cost and the ability of the defendant to address invalidity before the PTAB with judges that are more adept at patent law compared to federal judges in federal courts that might handle just a few patent cases or less per year.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.