Comments of the R Street Institute in Opposition to the Proposed Rulemaking, in Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board

Abstract

The R Street Institute respectfully submits the following comments in response to the Notice of Proposed Rulemaking dated May 9, 2018. R Street is a nonprofit, nonpartisan, public policy research organization whose mission is to engage in policy research and outreach to promote free markets and limited, effective government. Broadly, this comment makes three recommendations in response to the Notice. 1. The Office should not proceed with its proposed rulemaking to change the claim construction standard used in post-grant proceedings before the Patent Trial and Appeal Board. This is because changing the standard will: • Undermine the public interest in clarity of patents; • Create bad incentives toward ambiguity for patent applicants and holders; • Raise novel legal questions for post-grant procedure, such as the relevance of infringing products and the applicability of collateral estoppel; • Decrease certainty and predictability of claim construction outcomes; • Encourage hasty claim construction practice in district courts in efforts to preempt the Board; and • Open up the troubling possibility that a patent could be infringed by its own prior art, as a result of inconsistent claim constructions between the Board and district courts.