Effective May 2, 2016, patents expiring within 18 months of the filing of the petition may use a Philips-type claim construction, rather than broadest reasonable interpretation. 81 Fed. Reg. 18,750 at 18,766 (to be codified in 37 C.F.R. pt. 42.100(b)). The Philips-type claim construction may be requested by either party within 30 days of the filing of the petition. The rationale for this change is that broadest reasonable interpretation is the proper interpretation for proceedings where patents may be amended, but that soon-to-expire patents have no practical opportunity for amendment. Id. at 18,572 (Response to Comment 1).

The PTO considered—but decided against—using a Philips-type claim construction where patent owners forgo the right to amend. Id. at 18753–54 (Response to Comment 6). The PTO maintains that broadest reasonable interpretation is the correct standard when the patent owner has an opportunity to amend, even if the patent owner declines that opportunity. Id.

The use of broadest reasonable interpretation in IPRs was recently approved by the Federal Circuit. In re Cuozzo Speed Technologies LLC, 778 F.3d 1271 (Fed. Cir. 2015). This issue is currently on appeal to the Supreme Court, with oral arguments scheduled for April 25, 2016.

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