phillips construction PTAB

Final Rule Publishes Tomorrow

As predicted last week, the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here). The change will apply to inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB.

The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM.  The weight accorded to such determinations will vary depending upon circumstances.

The final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13th, 2018.

Is The Tide Turning for Patent Owners?

The Patent Trial & Appeal Board (PTAB) has issued an update to its Trial Practice Guide. The update includes notable practice changes that favor Patent Owners. Going forward, Patent Owners will have the last word in briefing, and at oral argument.  These changes, along with the imminent switch to a Phillips claim construction and increased feedback from the Federal Circuit are driving welcome changes at the PTAB for Patent Owners.

Please join me for an interactive webinar discussion of these changes next Monday, August 20th @1PM (EST). Register (here).  The webinar will identify key takeaways from these changes, especially for Bio/Pharma Patent Owners, and offer insights and discuss possible further practice changes that will occur in the weeks/months ahead.  My co-presenter for this webinar will be Charlotte Jacobsen, a partner in Ropes & Gray’s life sciences intellectual property litigation practice.

The formal portion of the webinar will begin at 1PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Existing BRI Litigation Cover Will Be Blown

While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) toPhillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away the application of a broader read at the PTAB as compared to that urged in the court. This enabled petitioners to take positions on claim breadth in PTAB petitions that would otherwise undermine a non-infringement position if advanced under Phillips.

Going forward at the PTAB under Phillips, petitioners will be forced to commit to a one-size-fits-all claim construction. Continue Reading A Phillips Construction Will Complicate PTAB Petition Drafting