Final Rule Change Replacing BRI with Phillips Standard

October 10, 2018

      Effective November 13th, all claims challenged in IPR, PGR, and CBM petitions will be interpreted under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  The final rule (here) publishes tomorrow and replaces the broadest reasonable interpretation (“BRI”) standard with the claim construction standard articulated in Phillips with the intent to obtain “greater consistency and harmonization with the federal courts and the ITC and lead to greater certainty and predictability in the patent system.” 

      As pointed out this summer in “Does the PTAB’s Western Digital Order Move the Needle”, adopting the Phillips claim construction standard should buttress any motion for stay in any AIA trial having concurrent district court litigation.  Although theoretically a broader standard, in most cases BRI and Phillips produce few, if any, differences in construction.  Going forward, patent owners will have an inability to leverage the fact that the subject claims may have different meaning depending on the type of proceeding.  Further, since PTAB decisions on claim construction will more often than not precede district court Markman decisions, district courts will benefit from and likely be influenced by the PTAB’s analysis and conclusions.

      Interestingly, the long standing quid pro quo for applying BRI at the USPTO has been fully extinguished for AIA trials.  That is, under the quid pro quo, examiners are instructed to use a broad interpretation of the claimed subject matter when applying prior art and in exchange applicants are permitted to clarify/narrow the claimed subject matter in response.  However, according to the final rule, a claim proposed in a motion to amend 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 (i) the ordinary and customary meanings of such claim as understood by one of ordinary skill in the art and (ii) the prosecution history pertaining to the patent.  This approach to claim interpretation may prove challenging for the PTAB where proposed claim amendments have no ordinary meaning and the prosecution history sheds no additional light on the construction.