The US Patent and Trademark Office (PTO) proposed changing the standard for claim construction in America Invents Act post-grant proceedings from the broadest reasonable interpretation (BRI) to the Phillips v. AWH Corp. standard followed by Article III federal courts. The proposal would apply the Phillips claim construction standard to inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method (CBM) patents. The PTO also proposed to consider any previous claim construction determination of the claims made in a civil action or an International Trade Commission proceeding that is timely made of record in an IPR, PGR or CBM proceeding. 

Under the proposed rule, a patent claim or a proposed claim in a motion to amend would be construed using the same claim construction that would be used in an action to invalidate a patent under 35 USC § 282(b). As explained in Phillips, claims are construed in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art. Under Phillips, claims are construed based on the record of the IPR, PGR or CBM proceeding, taking into account the claim language itself, the specification and the prosecution history. Extrinsic evidence, such as expert testimony and dictionaries, may be useful but is generally viewed as less reliable than intrinsic evidence. Claims would be construed to preserve their validity in cases where the claims are ambiguous even after applying all the available tools of claim construction. 

In addition, in an informative decision, the Patent Trial and Appeal Board (PTAB) held that a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend. Western Digital v. SPEX Technologies, Case Nos. IPR2018-00082, -00084 (PTAB, Apr. 25, 2018) (Fishman, APJ). Instead, the burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.

The PTO also issued Guidelines to Examiners regarding subject matter eligibility in view of Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals ( IP Update, Vol. 21, No. 5), instructing examiners that (1) "method of treatment" claims that practically apply natural relationships should be considered patent eligible under Step 2A of the PTO subject matter eligibility test, and (2) it is not necessary for "method of treatment" claims that practically apply natural relationships to include non-routine or unconventional steps to be patent eligible. The US Court of Appeals for the Federal Circuit distinguished between the patent eligible method of treatment claims in Vanda, which apply to natural relationships, and the patent ineligible claims of Mayo v. Prometheus ( IP Update, Vol. 15, No. 3) that were directed to only the natural relationship. In particular, the patent in Mayo recited a step of administering a drug to a patient in order to gather data about a natural relationship, while the patent in Vanda administered a drug to a patient to treat a specific condition.

PTO Proposes Changes To Claim Construction Standard, Guidelines For Analyzing Burden Of Proof And Subject Matter Eligibility

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