On May 9, 2018, the USPTO published a notice of proposal to change the claim construction standard applied to unexpired patent claims in PTAB trials. The notice in the Federal Register is available here.
Currently, the PTAB gives claims of an unexpired patent the broadest reasonable construction in light of the specification. This claim construction standard is arguably broader than the construction standard applied in district court, although often times the two claim construction standards do not have a practical difference.
The PTO’s proposed rules would have the PTAB apply the district court claim construction standard to claims of a challenged patent and proposed claim amendments in IPR, PGR, and CBM proceedings. Additionally, the new rules would require the PTAB to consider any prior claim constructions issued in a district court or ITC action. According to the PTO’s notice, “[h]aving AIA trial proceedings use the same claim construction standard that is applied in federal district courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings.”
The specific proposed rule would be:
In an [IPR, PGR, or CBM] proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe such claim in a civil action to invalidate a patent under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the [IPR, PGR, or CBM] proceeding will be considered.
If enacted, these new rules have the potential to drastically reshape petitioner and patent owner strategies involved in these proceedings.
Comments to the proposed rule can be submitted to PTABNPR2018@uspto.gov until July 9, 2018.