IPR Petitions Spike On The Eve Of New Claim Construction Rules

This morning, litigation tracking sources reported 115 new IPR petitions filed in the days just prior to the effective date of new claim construction rules at the Patent Trial and Appeal Board (“PTAB”). For comparison, that number is more than 10x the average of the previous 5 days (11 per day) and over 5x the maximum number of petitions reported in any one day during the previous week (21). Previously, the USPTO announced that the PTAB would no longer rely on the “broadest reasonable interpretation” (“BRI”) and instead apply the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

Pursuant to the announcement, however, the rule change will only apply to petitions filed on or after November 13, 2018. Serial IPR-filers suggested that BRI and Phillips are largely the same, downplaying the impact of the change. However, it would appear that contemporaries disagree as accused infringers rushed to secure an advantage under the old rules. Application of the BRI standard arguably advantages petitioners because broadly construed claims can be read on a wider swath of prior art. Adoption of the Phillips standard should lead to results more consistent with those in the District Courts, and greater overall certainty on patent validity. Even accounting for the Veteran’s Day holiday, a full 82 of the 115 newly reported petitions were filed on November 12th.

These changes are part of a broader array of reforms introduced by incoming USPTO Director Andrei Iancu. He has also announced guidance on Section 101 patent eligibility that should improve predictability and reliability during the examination process, and improvements to prior art searching and IT infrastructure. All of these changes are intended to streamline the patent examination process, rendering it less expensive and more reliable overall.

 

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