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Significant New Patent Office Rule Reshapes Strategic Approaches to Patent Claim Challenges

By Procopio Partner Miku H. Mehta

In a significant decision that promises to impact strategic thinking in patent claim challenges, the U.S. Patent and Trademark Office (USPTO) will soon adopt the same reading of claims in Patent Trial and Appeal Board (PTAB) post-grant proceedings as that used in federal district court. Any inter partes review (IPR), post-grant review (PGR) or covered business method patent review (CBM) filed with PTAB on or after November 13, 2018, will be subject to the claim construction standard used in Article III federal courts and the International Trade Commission, namely Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2015)(en banc). This narrower construction review potentially reduces the amount of prior art that can be introduced in a PTAB proceeding, and means that attorneys engaged in both federal court litigation and post-grant proceedings will now be motivated to take a more harmonized approach.

Many in the patent litigation community as well as patent owners have called on the USPTO to abandon their “broadest reasonable interpretation” (BRI) approach in post-grant reviews implemented by the America Invents Act. In a final rule published today (October 11, 2018) the agency said they followed the guidance of hundreds of comments filed after a May 2018 inquiry, with “major bar associations, industry groups, patent practitioners, legal professors and scholars, and individuals all supported the change.”

The USPTO rule said it used almost six years of historical data as well as public feedback to make its decision to abandon BRI. “Minimizing differences between claim construction standards used in the various fora,” it wrote, “will lead to greater uniformity and predictability of the patent grant, improving the integrity of the patent system.” The agency went on to say that “the scope of an issued patent should not depend on the happenstance of which court or governmental agency interprets it, at least as far as the objective rules go.”

Based on public feedback, the USPTO is not making the change to Phillips retroactive. As such, any PTAB filing prior to November 13, 2018, will still be considered under the BRI standard. Those PTAB petitioners whose strategic thinking lends them to favor a BRI review over Phillips likely will be motivated to file in the next several weeks.

Whether defending patent claims or challenging them, a sound patent litigation strategy is essential for success. With this significant change to PTAB post-grant proceedings, patent owners and challengers will be rethinking their approach, with proper guidance from their attorneys.


Miku H. Mehta is a Partner in Procopio's Silicon Valley office, is the Leader of the firm's Asia-Pacific Cross-Border Practice Group and is a member of its Intellectual Property practice. He advises clients on intellectual property, patent prosecution and counseling, as well as trademarks and copyrights. Miku’s practice focuses on the preparation and prosecution of patent applications, due diligence projects, including preparation of opinions in the areas of patentability, validity, infringement and product clearance, and patent licensing. He has extensive experience in technology including computer software and hardware, networks, internet-related applications, environmental technologies, optics, mechanical engineering, business processes and medical devices, as well as registration and renewal of trademarks.