January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
October, 18th, 2018
By Victor Lin
On October 11, 2018, the USPTO officially changed the claim construction standard used by the Patent and Trial and Appeal Board (PTAB) for interpreting claims in post-grant patentability challenges. The PTAB will now apply the PHOSITA standard expressed by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This change will bring greater consistency between how the PTAB and how federal courts and the International Trade Commission (ITC) construe patent claims.
Previously, the PTAB applied the Broadest Reasonable Interpretation (BRI) standard in inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM). Claim terms were given their broadest reasonable interpretation in view of the patent’s specification to one of ordinary skill in the art at the time of the invention without importing limitations into the claims from the specification. This at times meant that the PTAB gave broader readings of patent terms, thereby potentially making it easier to invalidate patents.
The PHOSITA standard, however, specifies that a claim term should be construed according to “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” The words of a claim are given their ordinary and customary meaning as used in the field of invention, unless the specification or prosecution history of the patent offers particular definitions to the words. Under this standard, the primary step of construing a claim term requires analyzing intrinsic evidence in the form of the patent claims themselves, the specification, and file history. Since the PTAB will start using the same claim construction standard applied by federal courts for IPRs, PGRs, and CBMs filed on or after November 13, 2018, there should be greater uniformity and predictability as this allows different forums to utilize the same standards in interpreting claims.
In addition to adopting the claim construction standard articulated in Phillips, the PTAB will also consider any prior claim construction determination that has been made in a civil action or ITC proceeding if it is timely made of record in an IPR, PGR, or CBM proceeding. This aspect will help to increase judicial efficiency, especially since a significant number of PTAB proceedings have been the subject of litigation in federal court. By applying the same claim construction standard in both PTAB proceedings and federal courts, parties will only need to develop a single set of claim construction arguments.
Practice Tips: For patent applicants, it is important to clearly define claim terms through the language of the claims themselves and in the specification to minimize any unintended claim construction.
WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.
© 2018 Whitmyer IP Group, Stamford, Connecticut.
 MPEP 2111
 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)
 Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 FR 51340, 51342 (October 11, 2018)