Academic journal article Vanderbilt Law Review

A Distinction without a Difference: Convergence in Claim Construction Standards

Academic journal article Vanderbilt Law Review

A Distinction without a Difference: Convergence in Claim Construction Standards

Article excerpt


In 2007, a district court found a patent for a medical device valid.1 While the district court litigation was pending, however, the Patent and Trademark Office ("PTO") found the exact same patent invalid.2 The Court of Appeals for the Federal Circuit then affirmed both decisions.3 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.4

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.5 In particular, the inter partes review ("IPR") proceeding has become extremely popular.6 Over 5,200 inter partes review petitions have been filed at the PTO since the proceeding's inception in September 2012.7 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.8 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.9 Yet others suggest there is little, if any, difference between the two standards.10 The rising debate caught the attention of the Supreme Court, which affirmed the use of the BRI standard during IPR proceedings in Cuozzo Speed Technologies, LLC11 in June 2016. With IPRs now commonplace in the patent litigation landscape, the difference between the claim construction standards is of vital importance.12

This Note contributes to the debate by providing empirical evidence of the legal authority cited in IPR proceedings. Based on the empirical findings, this Note argues that the different claim construction standards have largely converged in practice, despite their differing rationales. Part I of this Note discusses the rise of IPR proceedings and the development of the dual claim construction regime. Part II presents empirical findings about how the Patent Trial and Appeal Board ("PTAB") applies the BRI standard in IPR proceedings to show that both standards employ the same legal tools. Part III analyzes why the two standards have converged in practice, suggesting the convergence is due to similar guidance and shared canons of construction. Part IV proposes that, because the BRI standard in practice operates similarly to the Phillips standard, Congress should abolish the BRI standard and adopt the Phillips standard. Though abolishing the BRI standard would likely make little practical difference in terms of how often patent claims are invalidated because the standards are already so similar, recognizing a unified claim construction system would better support the goals of the patent system, such as efficiency, uniformity, and confidence in patent rights.


Patent claims are interpreted in two primary forums: the PTO and the federal court system.13 When an applicant submits a patent application, the PTO construes the claims to determine whether the claimed invention is patentable (i.e., novel and non-obvious). When a patentee sues a competitor for infringement or a competitor claims that a patent is invalid, courts construe the claim terms to determine the scope of the patented invention. …

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