Starting November 13, 2018, all IPR, PGR, and CBM proceedings will conduct their claim construction using the Phillips standard put forth by the Federal Circuit in 2005, turning away from the Broadest Reasonable Interpretation (BRI) standard it currently uses. This brings the PTAB in line with the Federal Courts and the ITC in examination standards.

Under BRI, claims are interpreted using the “broadest reasonable meaning of [a claim’s] words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”[1] Under the Phillips standard, claims are given a narrower construction as “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”[2]

Currently, there are about 150 petitions filed at the PTAB each month, with an institution rate of 40% over the last twelve months (statistics obtained using Insights at PostGrant Portal). It bears watching whether there will be a spike in filings at the PTAB this final month for petitioners who would prefer the BRI standard or a drop-off for those waiting for the new Phillips standard next month.

As Maier & Maier partner, Steve Kunin, explains here, the most significant impacts will not be felt in PTAB proceedings, but in District Court. “Practically speaking in most cases BRI and Phillips claim construction in PTAB AIA proceedings are not materially different; I see the real impact will be in district court proceedings when the patent owner is arguing for a narrow claim construction and can now point to the AIA trials as supporting the position.” Some petitioners may strategically wait for the new standard, as the PTAB construction would be given more deference with the newly aligned standards, and a narrower construction would prove useful in supporting a non-infringement argument.

[1] In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

[2] Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).