Question:

What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018?

Answer:

This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).

The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny.

Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.

This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, PRG or CBM proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. The supplement specifically covers details including the following…

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘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 is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.

* This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.

* The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.