PTAB Proposal On Claim Construction Would Align With Federal Courts, ITC

In the aftermath of the Oil States and SAS Supreme Court decisions, the PTO's proposal to adopt the Phillips standard for claim construction brings a small measure of relief for universities and research institutions. The "broadest reasonable interpretation" claim construction standard currently used by the PTAB in deciding IPRs may open the instituted claims to challenge by a larger body of prior art. In contrast, the Phillips "ordinary and customary meaning" standard used by district courts and the FTC may place more limits on the body of available prior art, and ultimately result in fewer patent claims being found invalid. Considering this discrepancy between the two claim construction standards, the PTO's proposed shift to the Phillips standard is welcome news to patent owners, including universities and research institutions looking to license their rights. As the proposed shift in claim construction at the PTAB may lessen the risk of invalidation by an IPR