PTAB Trials Will Now Apply the Phillips Claim Construction Standard

Since its inception, the PTAB has applied the “broadest reasonable interpretation” standard when construing claims of an unexpired patent in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings. However, for all IPR, PGR, and CMB petitions filed on or after November 13, 2018, claims will be interpreted using the same claim construction standard applied in federal district court as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The rules setting forth the new claim construction standard also state that any previous determination on claim construction in a civil action or ITC proceeding “will be considered” by the Board in the PTAB trial.

The new rules are published in the Federal Register and provided below:

37 C.F.R. § 42.100(b):

In an inter partes review 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 the claim in a civil action 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 inter partes review proceeding will be considered.

37 C.F.R. § 42.200(b):

In a post-grant review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action 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 Start Printed Page 51359ordinary 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 post-grant review proceeding will be considered.

37 C.F.R. § 42.300(b):

In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action 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 covered business method patent review proceeding will be considered.