In 2007, a district court found a patent for a medical device valid. While the district court litigation was pending, however, the Patent and Trademark Office ("PTO") found the exact same patent invalid. The Court of Appeals for the Federal Circuit then affirmed both decisions. At first glance, the idea that a patent could be found valid in one forum but invalid in another seems absurd. Yet the law condones these results: district courts and the PTO apply different claim construction standards. The Leahy-Smith America Invents Act of 2011 ("AIA") created new post-grant proceedings at the PTO to challenge patent validity, which increased the stakes of the dual claim construction regime. In particular, the inter partes review ("IPR") proceeding has become extremely popular. Over 5,200 inter partes review petitions have been filed at the PTO since the proceeding's inception in September 2012. The popularity is due, in part, to the fact that the proceedings have turned out to be surprisingly lethal to granted patents: eighty-four percent of final written decisions have invalidated some or all challenged claims, making the proceeding very attractive to patent challengers. This high invalidation rate sparked debate about the differing claim construction standards. The PTO applies the broadest reasonable interpretation ("BRI") standard, which liberally construes terms. District courts, in contrast, apply the Phillips standard, which more narrowly looks to the ordinary and customary meaning of a term based on the written patent document. The difference in construction has the potential to affect a patent's validity because when a term is construed broadly, the patent is more likely to cover preexisting ideas or inventions and to therefore be considered unworthy of patent protection. Thus, some commentators believe the BRI standard employed by the PTO is more likely to invalidate a patent than the Phillips standard applied in district courts.
Laura E. Dolbow,
A Distinction Without a Difference: Convergence in Claim Construction Standards,
70 Vanderbilt Law Review
Available at: https://scholarship.law.vanderbilt.edu/vlr/vol70/iss3/6