PTAB Replaces BRI Standard with Phillips Standard

By Suzanne Lecocke

On October 11, 2018, the United States Patent and Trademark Office (USPTO) published its final rule entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.”  The final rule, applicable to Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review, will become effective on November 13, 2018.

 Under the new rule, the Patent Trial and Appeal Board (PTAB) will construe unexpired patent claims and substitute claims proposed in a motion to amend in accordance with the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“Phillips standard”), which will include construing the claim in accordance with its ordinary and customary meaning as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.  The Phillips standard will replace the current “broadest reasonable interpretation” (BRI) standard used by the PTAB.

The PTAB already construes claims for expired patents and soon-to-be-expired patents in accordance with the Phillips standard.  The USPTO uses and will continue to use the BRI standard for patents and patent applications under examination.

Although claim construction under the BRI standard must have been reasonable and not merely the broadest construction, BRI potentially allowed for broader claim construction than does the Phillips standard and consequently implicated a broader range of potentially invalidating prior art. The Phillips standard, by contrast, requires that claims be given their ordinary and customary meaning and, similar to the BRI standard, places primary reliance on intrinsic evidence (that is, the patent specification, drawings, and USPTO prosecution history) and secondary reliance on extrinsic evidence when interpreting claim terms.

Additionally, the PTAB added a new provision stating that it will consider any construction of a claim term previously made in a civil action under 35 U.S.C. § 282(b) or in a proceeding before the International Trade Commission (ITC) if that prior claim construction is timely made of record in the IPR, PGR, or CBM.

Utilizing the same Phillips standard as Article III federal courts and the ITC should lead to greater consistency in patent claim constructions and increased judicial efficiency between the different forums.  This will be especially apparent when claim construction is occurring in parallel federal court and PTAB proceedings or when claims have already been construed in one forum.  However, most observers agree that the actual outcome of only a very few PTAB proceedings hinged on which claim construction standard — BRI or Phillips — was used.

The PTAB further clarified that, when using Phillips, if it can be warranted, it will construe a patent claim in a way that will tend to uphold patentability of the claim.

Even with the enactment of the new rule, the burdens of proof in federal district courts, at the ITC, and at the PTAB have not changed.  Federal courts and the ITC require clear and convincing evidence to invalidate a patent claim; the PTAB requires only a preponderance of the evidence to prove invalidity.  In addition, patent claims enjoy a statutory presumption of validity in federal courts and the ITC, whereas no such presumption exists in PTAB proceedings.

The complete rule may be found by clicking here: