Claim Construction During Inter Partes Review

Most patentability disputes turn on what the claims mean. Whether a reference anticipates a claim, or whether a combination renders it obvious, depends on how broadly each claim term is read. In an inter partes review, the standard the Board uses to read claims has therefore drawn a great deal of attention, and it changed in 2018.

The current standard: Phillips

For petitions filed on or after November 13, 2018, 37 C.F.R. § 42.100(b) requires the Board to construe a claim using the same standard that would be used in a civil action to determine validity under 35 U.S.C. § 282(b). That is the framework of Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc): claim terms receive their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention, read in light of the claims, the specification and the prosecution history.

Parallel rules apply in post-grant review (§ 42.200(b)) and applied in covered business method review (§ 42.300(b)).

The earlier standard: broadest reasonable interpretation

Before the change, the Board gave unexpired claims their broadest reasonable interpretation (BRI) in light of the specification. BRI is the standard examiners use during prosecution, on the theory that an applicant who can amend should be held to the broadest reading the claims will reasonably bear.

In Cuozzo Speed Technologies, LLC v. Lee (2016), the Supreme Court upheld the USPTO’s use of BRI in IPR as a reasonable exercise of its rulemaking authority. The Office later chose to change course by rule. The background and the debate are covered in Cuozzo and the end of BRI at the PTAB.

Why the change matters

The main reason given for adopting Phillips was consistency. Patents challenged in IPR are often in litigation at the same time. Under BRI, a claim could be read more broadly at the Board than in court, so the same claim could be found unpatentable at the USPTO under a reading the court would not adopt. Using one standard reduces that mismatch and makes Board decisions more predictable for parallel cases.

The rule also addresses prior constructions directly. Any prior claim construction determination about a term in a civil action, or in an ITC proceeding, that is timely made of record in the IPR will be considered. The Board is not bound by it, but it must take it into account.

In practice the difference between BRI and Phillips is often small, because BRI also had to be reasonable in light of the specification. It matters most where the specification or prosecution history narrows a term that would otherwise read broadly.

How the Board approaches construction

• Only what is needed. The Board construes only claim terms that are in controversy, and only to the extent necessary to resolve the dispute. Many decisions state that no express construction is needed.
• Petitioner’s statement first. Under 37 C.F.R. § 42.104(b)(3), the petition must explain how the challenged claims are to be construed. See the basics of an IPR petition.
• Patent owner’s response. The patent owner may propose its own construction in the preliminary response and again during trial.
• Construction can evolve. The Board’s construction in the institution decision is preliminary and may be revised in the final written decision based on the full record.

Intrinsic and extrinsic evidence

Under Phillips, intrinsic evidence comes first: the claim language, the specification and the prosecution history. Statements the patent owner made during prosecution, or in other proceedings, can limit a term’s meaning.

Extrinsic evidence, such as dictionaries, treatises and expert testimony, can help explain the technology and how a skilled artisan would understand a term, but it cannot override clear intrinsic evidence. Expert declarations on construction are common in IPRs, and the experts can be cross-examined by deposition.

On appeal, the Federal Circuit reviews the Board’s ultimate construction de novo and its findings on extrinsic evidence for substantial evidence, an approach that parallels the framework the Supreme Court set out for district courts in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (2015).

Older cases and other proceedings

Board decisions and Federal Circuit opinions on petitions filed before November 13, 2018 apply BRI, so their constructions should be read with that in mind. The rule change also affected the PTAB trial rules more broadly. BRI still applies in ordinary examination and generally in reissue and ex parte reexamination of unexpired patents.

Key takeaways

• For petitions filed on or after November 13, 2018, the Board applies the Phillips standard under 37 C.F.R. § 42.100(b).
• Earlier petitions used BRI, which Cuozzo (2016) upheld.
• Prior constructions from district courts or the ITC that are timely made of record will be considered.
• The Board construes only disputed terms, and only as far as necessary.
• Intrinsic evidence controls; expert testimony helps but cannot contradict it.