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Patent Law Alert -- The Patent Board Adopts the Phillips Standard in Claim Construction


By Mark Montague and Daniel Kang

The validity of a U.S. patent can be challenged in several different venues -- in a U.S. District Court, at the U.S. International Trade Commission (“ITC”), and at the Patent Trial and Appeal Board (the “Board,” also known as the “PTAB”) of the U.S. Patent and Trademark Office. In such an invalidity proceeding, the scope of a patent claim is often critical and, until now, the different venues have applied different standards in ascertaining the proper scope of patent claims. The Board is now changing its claim construction standard from “broadest reasonable interpretation” (“BRI”) to the Phillips standard used by the U.S. District Courts and the ITC.

Under the Phillips standard, “words of a claim are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art at the time of the invention.”  The Phillips standard is a narrower claim construction standard than the BRI standard, which gives a claim its broadest reasonable interpretation, so long as such interpretation is consistent with the patent’s specification.

Currently, the Board applies the BRI standard to interpret challenged claims in all invalidity proceedings under the Leahy-Smith American Invents Act (“AIA”).  These invalidity proceedings include inter partes review (“IPR”), post-grant review (“PGR”), and covered business method (“CBM”) proceedings.  Under the BRI standard, claim terms often are given a broad construction, resulting in more prior art that can be applied against the challenged claims.  Under the new Phillips standard, claim terms are less likely to be given such a broad construction, resulting in a reduction of the universe of prior art that can be applied.

Ultimately, the change will bring more consistency with respect to claim construction across the different tribunals, but it will also make it slightly more difficult for challengers to invalidate patents in AIA proceedings. 

The change becomes effective on November 13, 2018 and will apply to all IPR, PGR, and CBM petitions filed on or after that date.

For more information, please contact Mark Montague, Daniel Kang, or your CLL attorney.


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