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BRI v Phillips: a changing landscape?


Ethan Horwitz and Shaun Hargadine

BRI v Phillips: a changing landscape?

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In the US two standards for construing patent claims are applied, but this could be about to change, say Ethan Horwitz and Shaun Hargadine of Carlton Fields.

The Patent Trial and Appeal Board (PTAB) is not quite a court and not quite an examiner and the question now before the US Supreme Court is whether the PTAB should use the courts’ or the examiners’ standard for claim construction.

In a court, the standard for claim construction is how a person of ordinary skill in the art would understand the term (the Phillips standard). By contrast, an examiner uses the broadest reasonable interpretation (BRI) standard. The reasons for each standard and why they are used, as well as the history of the PTAB’s standard, will be reviewed as will the issues now before the Supreme Court.

The claim construction standard used by courts in determining validity and infringement is how the claim term will be understood by the person of ordinary skill in the art. The US Court of Appeals for the Federal Circuit in the 2005 case Phillips v AWH noted that proper claim construction is informed by statute, namely the first and second paragraphs of 35 USC §112. 

Ethan Horwitz, Shaun Hargadine, BRI standard, PTAB, Cuozzo, CBM, AIA, USPTO, patent, Carlton Fields,


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