Will the Phillips Standard Change the Game on Patent Claims?

by Doug Chartier

Arguing patent claims before the Patent Trial and Appeal Board is going to resemble district courts a little more, and that could have big implications for patent litigation strategy as a whole.

Last week the U.S. Patent and Trademark Office finalized a rule to make the patent claim construction standard in PTAB proceedings the same as the standard used in district courts when construing unexpired claims. Instead of the patent office’s long-used “broadest reasonable interpretation” standard, PTAB proceedings like inter partes review will adopt the “Phillips” standard that district courts and the International Trade Commission use for patents. Patent experts say this change could enable more patent claims to survive IPRs, and alleged infringers will need to give more thought to whether they should use them to try to wipe out patent claims.

The USPTO said its new claim construction rule, proposed back in May, will lead to “greater consistency and harmonization with the federal courts and the ITC and lead to greater certainty and predictability in the patent system.” As a result of the rule, the PTAB will use the claim construction standard drawn from the 2005 Federal Circuit Court of Appeals opinion Phillips v. AWH Corp. when interpreting a patent claim in IPR, post-grant review or covered business method patents proceedings. The rule takes effect Nov. 13.

To read this story and other complete articles featured in the October 15, 2018 print edition of Law Week Colorado, copies are available for purchase online.