Dueling Claim Construction Standards at the PTAB and District Courts

  • Aug 7 2018
  • |
  • Category: News

By John Sepulveda

The United States Patent and Trademark Office (“USPTO”) and the federal district courts currently use two different standards to construe patent claims in patents and patent applications.  The two standards are (1) the Broadest Reasonable Interpretation (“BRI”) Standard and (2) the Phillips Standard created by the Court of Appeals for the Federal Circuit (“CAFC”) in 2005.[1]

In general, the USPTO currently uses the broader BRI standard during patent prosecution and during America Invents Act (“AIA”) trial proceedings[2] conducted by the Patent Trial and Appeal Board (PTAB), a USPTO administrative tribunal.[3]  However, depending on the expiration date of the patent, the PTAB also uses the Phillips standards to construe patent claims.  Federal district courts and the International Trade Commission (“ITC”) use only the Phillips standard to construe patent claims.  Thus, the use of the two different standards is unfair because the USPTO, in general, uses an arguably broader standard in its AIA trial proceedings than federal courts use during patent infringement litigation.

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