Most patent lawyers tend to be confident they know the difference between the two competing standards for patent claim construction — the “broadest reasonable interpretation” (BRI) used by the USPTO in patent application examination, and the Phillips standard used by district courts. But a look at how tribunals actually apply those differing standards is enlightening. Our panelists examined dozens of litigations in recent years where both district courts and the PTAB construed the same patents. Their timely findings provide useful insights and tactics as the PTAB is expected to switch from BRI to Phillips in post-grant proceedings this fall. Whether the PTAB will make the change retroactive is still uncertain. The panelists will give tips on how both patent owners and petitioners should proceed in the interim. Other ramifications of the change are:
• Deciding on a proposed claim construction will require even more care, because there will no longer be an opportunity to take differing positions at the PTAB and district court, now a frequent and often successful litigation strategy
• That defendants in litigation can expect to be able to mount stronger non-infringement positions as a uniform and narrower claim interpretation makes it less likely the accused device will infringe
• The potential fallout from the PTAB adopting a standard for AIA proceedings that differs from the one used in all other USPTO proceedings, such as reexamination and reissue.
- Eric Cohen, Brinks, Gilson & Lione
- Kevin Greenleaf, Dentons US LLP
- Shaun Zhang, Goldman Ismail Tomaselli Brennan & Baum LLP