District court standard for claim construction will soon apply to all new AIA trial proceedings

Published October 10, 2018

Starting November 13, 2018, the PTAB will begin to apply the federal district court claim construction standard to all newly-filed AIA trial proceedings (IPRs, PGRs, and CBMs), rather than the broadest reasonable interpretation (BRI) standard currently used in proceedings that involve unexpired patents. The USPTO will continue to apply the BRI standard for unexpired patents in AIA trial proceedings filed before November 13th. In addition, the BRI standard will continue to be the standard that the USPTO applies when examining patent applications, and during reissue and reexamination proceedings.

The new rule, which is reflected in 37 C.F.R. 42.100(b) (IPRs), 42.200(b) (PGRs), and 42.300(b) (CBMs), is as follows:

(b) In an [inter partes/post-grant/covered business method patent] review  proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the [inter partes/post-grant/covered business method patent] proceeding will be considered.

The rule change will be officially published in the Federal Register tomorrow, October 11, 2018.