Supreme Court Agrees to Hear Cuozzo IPR Appeal

On January 15, 2016, the Supreme Court granted the petition for cert for Cuozzo Speed Technologies, LLC v. Lee. This case is based on an inter partes review (IPR) instituted by the USPTO Patent Trial and Appeal Board (“the Board”). The Board applied the “broadest reasonable interpretation” in construing the claims during the IPR. On appeal, the Federal Circuit Court of Appeals affirmed the Board’s claim construction standard and held that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable. 

More particularly, the issues are stated as follows: (1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable. 

IPRs are hybrid proceedings that allow the claims in an unexpired patent to be amended once within the proceedings. The use of the “broadest reasonable interpretation” standard for claim construction is based on the idea that the amendable claims should be judged with the same standard as in the prosecution stage of the patent application. A narrower claim construction could mean that the patent owner could walk away with a claim that never would have been granted in a normal application prosecution. However, claim amendments have been difficult to obtain in most IPRs.     

The denial of judicial review of institution decisions has been a sore point with both petitioners and patent owners since the beginning of AIA post grant proceedings. A determination by the Supreme Court that judicial review of institution decisions is appropriate after a final decision by the Board would be beneficial. However, it would perhaps be a cleaner solution if the issue were addressed by Congress. 

 

The IPR case number is IPR2012-00001 regarding patent number 6,778,074, Final Decision, Paper 59, November 13, 2013. The Supreme Court docket number is 15-446

Comments

Comments

Post new comment

The content of this field is kept private and will not be shown publicly.
  • Web page addresses and e-mail addresses turn into links automatically.
  • Allowed HTML tags: <a> <em> <strong> <cite> <code> <ul> <ol> <li> <dl> <dt> <dd>
  • Lines and paragraphs break automatically.