PTAB Patent Challengers Beware: Starting November 13, 2018, winning may be a little more difficult

According to a rule published yesterday by the U.S. Patent & Trademark Office (USPTO), available here, the Patent Trial and Appeal Board (PTAB) will no longer construe claims using the broadest reasonable interpretation standard.  Instead, it will start applying the narrower Phillips standard used by Article III courts and the International Trade Commission (ITC) for all inter partes reviews, post grant reviews, and covered business method proceedings filed on or after November 13, 2018.

The new rule was implemented to promote consistency among the various tribunals that are construing patent claim terms.  According to the rule, the PTAB will construe claims according to their ordinary and customary meaning as would be understood by one of ordinary skill in the art.  The PTAB will consider the claim language itself, the specification, the prosecution history, and extrinsic evidence to determine the meaning of the claims. Furthermore, the PTAB will construe claims to preserve their validity as described in Phillips, when the circumstances warrant it. Additionally, the PTAB will consider any prior claim construction determination by a district court or the ITC.

The rule will not be enacted retroactively and will affect only petitions filed on or after the effective date of the rule, i.e., November 13, 2018.  Petitioners looking to maximize their chances of invalidating patents at the PTAB should therefore consider filing petitions prior to this date.  For those petitions filed after, district court and PTAB strategies will change dramatically.  Please join us on Wednesday, October 24 either in person in Nashville, Tennessee or via phone to hear Bass, Berry & Sims member Mike Kiklis discuss these new strategies during a complimentary CLE seminar