Commentary: Do Proposed Uspto Rules for Claim Construction Go Far Enough?

• Jurisdiction: United States,Federal
• Citation: Vol. 43 No. 2
• Publication year: 2018
• Author: D. Benjamin Borson
• topic: Patent law,Intellectual Property

COMMENTARY: Do Proposed USPTO Rules For Claim Construction Go Far Enough?

D. Benjamin Borson

Borson Law Group P.C.

This comment represents the opinions of the author, and does not necessarily represent the views of any organization other than the author's firm.

COMMENT

The USPTO is to be commended on revising its rules for interpreting claims in inter partes Reviews (IPR), Post-Grant Review (PGR), and Covered Business Methods (CBM) before the Patent Trial and

Appeals Board (PTAB).

THE PROPOSED RULE IS A STEP IN THE RIGHT DIRECTION

With the proposed new rule based on the Phillips case, the USPTO has taken a significant step to correct the problems associated with differing standards of claim interpretation of the Agency and Article III courts. The USPTO's proposed rule will decrease the incentive to forum shop (between PTAB and district court) for a "favorable" claim interpretation by litigants.

The proposed rule, if made final, will help shorten the time taken for litigants to seek redress for alleged infringement and validity. Under the existing rules, a Plaintiff files an action for infringement of a patent claim, and the Defendant may file a motion to move the issue of validity to the PTAB to possibly receive a more favorable decision based on the PTAB's Broadest Reasonable Interpretation (BRI) standard. As a result, factual determinations of infringement or non-infringement by the court can be significantly delayed. Under the proposed rule, by applying the same standards as do Article III courts, such motions to have the PTAB decide upon validity will likely decrease, thereby decreasing the costs of litigation, and saving time.

THE PROPOSED RULE APPLIES TO ALL FACETS OF CLAIM ADJUDICATION

Under 35 U.S.C. § 101, "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." [e.g., § 102, § 103, and § 112]. Because patent eligibility is a feature of the claims, the new rule will help ensure that a patent is evaluated in accordance with § 101.

In cases where patent claims are challenged as not being drawn to "patent eligible subject matter" (e.g., Laws of Nature, Phenomena of Nature, and Abstract Ideas), by requiring the PTAB to analyze the claims in light of the claim's plain meaning, the specification and the prosecution history, the author believes that under the proposed rule, such...