Significant New Patent Office Rule Reshapes Strategic Approaches to Patent Claim Challenges

In a significant decision that promises to impact strategic thinking in patent claim challenges, the U.S. Patent and Trademark Office (USPTO) will soon adopt the same reading of claims in Patent Trial and Appeal Board (PTAB) post-grant proceedings as that used in federal district court. Any inter partes review (IPR), post-grant review (PGR) or covered business method patent review (CBM) filed with PTAB on or after November 13, 2018, will be subject to the claim construction standard used in Article III federal courts and the International Trade Commission, namely Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2015)(en banc). This narrower construction review potentially reduces the amount of prior art that can be introduced in a PTAB proceeding, and means that attorneys engaged in both federal court litigation and post-grant proceedings will now be motivated to take a more harmonized approach.

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