Love it or hate it, inter partes review (IPR) is now a judicially endorsed fixture in the Patent Trial and Appeal Board's (PTAB) toolbox. We wrote about this in the first September post on this blog, noting that the U.S. Supreme Court upheld the constitutionality of this administrative form of review in resolving disputes over the validity of granted patents and claims of alleged patent infringement.
This post looks at another development on the PTAB front; the publication in the Federal Register announcing adoption of a new rule regarding the standard that reviewers will use to examine issues related to so-called claim construction in patent and other dispute cases. The new rule takes effect Nov. 13 and what it means is that the PTAB will now begin using the same standard as one applied by federal courts and the International Trade Commission (ITC).
To appreciate the significance of the move, it helps to get a handle on what claim construction is. As experienced patent law practitioners know, the claims in a patent application made about an invention serve as a foundation for defining if it is patentable. The words of the claims documents establish the basis upon which reviewers determine patent validity or infringement claims.
Since 2012, the standard that the PTAB has used to assess such matters has been based on "broadest reasonable interpretation" of claim language. Examiners using that standard had the discretion to, as a reporter for IPWatchdog puts it, "logically stretch claims to their reasonable limits" based on what might be understood by one of ordinary skill in the related art.
Meanwhile, since 2005, cases brought to federal courts and the ITC have been assessed using a narrower standard based primarily on the meanings of claim words as a person of ordinary skill in the art in question "at the time of the invention" might understand them.
This difference in approach has led to a lot of criticism, especially from patent owners who feel the broad PTAB standard put the owners at a disadvantage. The change to a universal standard is widely hailed as positive, but opinions vary on how much of a difference it will actually make.
For now, those facing inter partes review actions will need to be aware of the shift and prepare their positions accordingly.