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ARTICLE · 09 AUGUST 2018

BRI Vs. Phillips Standard: "Treating" Definitions With Care

Wolf, Greenfield & Sacks, P.C.
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Typically, the PTAB and district courts apply different claim construction standards, which can cause the two forums to construe the same term from the same patent differently.

United StatesIntellectual Property
John D. Nguyen
John D. Nguyen
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Typically, the PTAB and district courts apply different claim construction standards, which can cause the two forums to construe the same term from the same patent differently. Such divergent treatment occurred in a recent PTAB decision, Mylan Pharmaceuticals Inc. v. Janssen Oncology, Inc. (IPR2016-01332). In Mylan, the PTAB's claim interpretation of the term "treatment" differed from the district court's interpretation of the same term in co-pending litigation. The Mylan decision illustrates the divide between the two forums' claim construction standards and the consequences that those different standards can have on an IPR.

The PTAB typically determines the scope of claims based on the " broadest reasonable interpretation" (BRI) claim construction standard. District courts, on the other hand, apply the "Phillips" standard, named after the Federal Circuit case that explained it. Under Phillips, claim terms are given "the meaning that the term would have to

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