For AIA trial petitions filed after November 12, 2018, the Patent Trial and Appeal Board will construe claims challenged and proposed to be amended (narrowed) in these proceedings using the same claim construction standard that is used to construe the claim in a civil action in federal district court. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In these trials, the Board will also consider claim construction determinations made in proceedings in district courts or the International Trade Commission. A recent Federal Register notice includes the text of rules the Patent Office revised to implement these changes.

The Patent Office proposed and invited comments on these changes in a May 2018 notice in the Federal Register (discussed here). Hundreds of entities responded. Although most supported the change in the claim construction standard, some opposed. Those opposing argued that Congress intended the Office use the broadest reasonable interpretation (BRI) standard in AIA trials, consistent with the Office’s review of patent applications, and consistent with the Office’s current application of that standard in AIA trials—a standard the Supreme Court countenanced in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). But the Office countered that the legislative record contains no evidence of such Congressional intent, quoting the Supreme Court: “[N]either the statutory language, its purpose, or its history suggest that Congress considered what standard the agency should apply when reviewing a patent claim in inter partes review.” Id. at 2144.

Those opposing also argued that the BRI standard ensures the Office will construe claims consistently in various proceedings involving the same patent, for example, AIA trials, reissue, and reexamination. Changing the claim construction standard for AIA trials would, according to some, complicate the Office’s authority and ability to consolidate these proceedings. But the Office countered that its patentability determination will be consistent under both standards in the vast majority of cases. Cf. PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016) (“This case hinges on the claim construction standard applied—a scenario likely to arise with frequency. And in this case, the claim construction standard is outcome determinative.”). The Office further noted that it “has not, to date, merged or consolidated a reexamination or reissue proceeding with an AIA proceeding.”

Data the Federal Circuit publishes show that appeals originating from cases decided by federal district courts no longer dominate its docket. Since 2016, the court received more appeals originating from the Patent Office than district courts.

Data source: Year-to-date Activity (Sept. 30) posted at the Federal Circuit’s website.

It should come as no surprise therefore that there has been “a six-fold increase in the number of opinions relating to AIA proceedings issued by the Federal Circuit [since 2016] as compared to the prior 2012-2015 time frame.” Further, the vast majority of patents subject to AIA trials are, according to the Office, also the subject of district court actions. These facts along with the Office’s significant experience in its almost six years of administering these proceedings, and its authority to change the standard, led it to conclude that there are compelling reasons to apply the same standard in these proceedings as that used in district court and the ITC. Some of those reasons include increased judicial efficiency, and greater predictability and certainty as to claim scope, which should lead to improved uniformity and enhanced integrity of the patent system. Further, the Board has experience in applying the Phillips standard and the Office therefore anticipates no increased costs or delay in the proceedings.

The Federal Circuit has explained many times over the past 30 years the axiom that claims ought to be construed the same way when determining validity and infringement. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279 (Fed. Cir. 1988) (Rich, J.). The rule changes now ensure the axiom applies also to determining patentability in AIA trials. An aggrieved trial participant may challenge the propriety of the revised rules. After all, different evidentiary records in different forums may lead to different claim constructions even under the same claim construction standard. But for now, the rules are changing, and participants need to understand the consequences and adapt.