PTAB to Implement Rule Changing Claim Construction Standard in AIA Trial Proceedings

The USPTO has published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings before the PTAB.

The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Additionally, under the final rule, when construing a claim term in an IPR, PGR or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR or CBM.

The final rule will not be retroactively applied and instead will apply only to IPR, PGR and CBM petitions filed on or after the effective date of the final rule, which is November 13, 2018.

The full text of the final rule is published in the Federal Register.