Changes in the PTAB: From BRI to Ordinary and Customary Meaning

By Carla Vercellone

In May of this year, the U.S. Patent and Trademark Office (‘USPTO’) issued a Notice of Proposed Rulemaking. Therein, it solicited and collected comments on the potential switch from the Broadest Reasonable Interpretation (‘BRI’) standard to the Ordinary and Customary meaning of a claim in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) on claim construction for AIA Trial Proceedings. Due to the public’s favoring of this change, the issue was submitted to the Office of Management & Budget (‘OMB’) for final regulatory approval. Finally, the Final Rule Package was published on October 10th, 2018; it will affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB filed on or after the effective date of this new rule, November 13th, 2018.

There are three parts within a claim that patent owners need to keep in mind as they write it: it must be written in a way that an ordinary person could understand; it must cover what the inventor wanted to create and what was actually created; and, it must prove that the claim is valid over prior art. When determining whether patent infringement has occurred, both legal teams and the court look at the patent claims, how they were construed, and interpret the meaning of said claims in order to determine whether a proposed product or method infringes patent rights or whether they are invalid. [1]

The final rule replaces the BRI standard with the claim construction standard used by US federal courts and the International Trade Commission (ITC)—the standard applied in Phillips. Under the final rule, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action or a proceeding before the ITC, if that prior claim construction is timely made of record.

A petition for inter partes review is timely if it’s filed within one year of being served with a complaint alleging patent infringement. 35 USC §315 (b). However, despite filing a petition in a timely manner, the PTAB may still reject an IPR proceeding considering the status of any legal related litigation, such as a district court proceeding. NHK Spring Co. v. Intri-Plex Techs., Inc., Case IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018). On the other hand, the Court of Appeals Federal Circuit has now reversed the common practice of the PTAB to accept certain IPR petitions outside of the 1-year window: previously, if a first-filed complaint outside of this window was dismissed without prejudice, the 1-year period reset. The Court reversed the Board’s long-standing practice in Click-to-call Techs., LP, v. Ingenio Inc., LLC., F.3d, 2015-1242 (Fed. Cir. Aug. 16, 2018).

Until now, parties challenging an unexpired patent in PTAB proceedings often had argued that under the BRI standard a challenged claim must be broader than how a court would interpret the claim, thus increasing the possibility that the claim, read more broadly, would encompass prior art and be canceled as unpatentable. [2] Switching to a standard of construing patent claims in accordance with the Ordinary and Customary meaning from Phillips will minimize differences between the decisions issued in the various fora on similar matters, and will lead to greater uniformity and predictability of the patent grant, improving the integrity of the patent system.

Although the change has officially been made, the Broadest Reasonable Interpretation standard will still be used during patent prosecution and PTAB appeals until November 13th, 2018; if filed on or after said date, the inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB will be subject to the new rule.

You may read the full Final Rule Package text here, and the UPSTO’s summary here.


[1] Know, Patent. “Patent Claim Construction: Everything You Need To Know”. Upcounsel, 2018

[2] Tennant, David M. “USPTO Changes PTAB Claim Construction Standard From Broadest Reasonable Interpretation To The Standard Used By Courts | White & Case LLP International Law Firm, Global Law Practice”. Whitecase.Com, 2018


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