Supreme Court to Hear Claim Construction Case
On January 15, 2016, the U.S. Supreme Court granted certiorari in In re Cuozzo Speed Technologies LLC. The case was appealed from the Court of Appeals for the Federal Circuit and arises from an inter partes review (IPR) of U.S. Patent 6,778,074 by the Patent Trial and Appeal Board (PTAB). The Supreme Court will consider the claim interpretation standard applied by the PTAB in IPR proceedings
The PTAB invalidated claims at issue based on claim construction using the “broadest reasonable interpretation” (BRI) standard. On appeal to the Federal Circuit, a majority of the reviewing panel determined that (1) Congress was silent to the issue of what standard to use in claim interpretation in post-grant proceedings; and (2) it was permissible for the patent office to use the BRI standard based on the statutory language authorizing inter partes review.
In her dissent, Judge Newman disagreed with the majority, reasoning that: (1) IPR proceedings are a cost effective alternative to litigation designed to reach the same result as a district court which uses a “plain and ordinary meaning” standard; (2) The BRI standard is inappropriate where the iterative amendment process of the initial examination is strictly limited; and (3) A BRI standard may increase the possibility of error and the unreliability of results.
If the Supreme Court affirms that a BRI standard may be used, IPR proceedings will likely continue to be attractive to potential defendants in invalidating claims. On the other hand, this could be prevented if the Supreme Court adopts a view similar to Judge Newman’s dissent. A decision is expected by the Supreme Court on this case by June 2016.
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Additional information about post-grant proceedings can be found on our Post-Grant Patent practice group page.