On October 11, 2018, the USPTO published in the Federal Register a rule change, 83 F.R. 51340, to take effect today, November 13, 2018. For all AIA post-grant petitions (IPRs, PGRs, and CBMs) filed on or after this date, the broadest reasonable interpretation (BRI) standard will no longer be used in claim construction for these proceedings before the PTAB. Rather, the new standard will be consistent with what is utilized in district courts and agency proceedings which involve patents, namely, the so-called Phillips standard.
The BRI standard is the same standard used in patent prosecution, namely, claims are given their broadest reasonable interpretation in light of the specification. The claim term is given its ordinary and customary meaning unless it is inconsistent with the definition of the term specified in the specification. This rule lends itself to a policy that the inventor is the master of his or her own invention. As such, the inventor can act as his or her own lexicographer and disavow the scope of a claim term in the specification (MPEP 2111). This is the standard that was used in PTAB proceedings.
The Phillips standard, named after the Fed Circuit en banc decision,[1] is the standard used in U.S. district court actions and ITC proceedings which involve patent investigations. Claim construction begins with the claim terms themselves. Claim terms are given their ordinary and customary meaning that a person of ordinary skill in the pertinent art (i.e., POSITA) would give at the time of the filing of the application. Intrinsic evidence in the form of the specification and the prosecution history are the preferred sources of defining the claim term; extrinsic evidence like expert testimony and outside dictionaries, thesauruses, and industry manuals are relegated to secondary sources. By adopting this standard for PTAB proceedings, the USPTO has placed post-grant proceedings on a more even par with judicial and agency litigation proceedings, creating more uniformity and efficiency in patent adversarial processes.
This uniformity and efficiency go to the differing standards of review used to determine BRI and Phillips. BRI is determined through a preponderance of the evidence, or just a 51% burden of evidence pointing to a claim term meaning in a particular direction. Claim terms under a Phillips standard is determined through clear and convincing evidence, which is a much more rigorous standard somewhere between preponderance of the evidence and beyond a reasonable doubt used in criminal cases.
The Federal Register publication did make note that 86.9% of PTAB post-grant proceedings were also subject to related federal district court actions. Because the PTAB deals with validity (i.e., patentability) of issued patents, and the district courts and ITC deal with infringement of issued patents, there was a prevailing concern of unfairness between the different types of actions and the differing standards used to assess patentability and infringement. Therefore, the rule change to the Phillips standard should minimize, in theory, the inconsistent results between PTAB and district court rulings.
Because of the rule change, there will be corresponding changes to the regulatory rules, as well, changing the wording of claim construction from the BRI standard to the Phillips standard (42 C.F.R. §42.100 (IPRs), 42 C.F.R. §42.200 (PGRs), and 42 C.F.R. §42.300 (CBMs)). This will happen sometime soon at a future date.
[1] See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).