The Supreme Court Will Address Key Issues Concerning the PTAB. Let Practical Law Help You Get Up to Speed on This Important IP Topic. | Practical Law

The Supreme Court Will Address Key Issues Concerning the PTAB. Let Practical Law Help You Get Up to Speed on This Important IP Topic. | Practical Law

The US Supreme Court has agreed to consider certain important questions concerning inter partes reviews, which are conducted by the Patent Trial and Appeal Board (PTAB), a tribunal within the US Patent and Trademark Office. The decision may potentially have a major impact on the conduct of these proceedings and patent practice generally. Unsure what this may mean to your clients or practice? Practical Law has resources to help you get up to speed on the PTAB and these proceedings.

The Supreme Court Will Address Key Issues Concerning the PTAB. Let Practical Law Help You Get Up to Speed on This Important IP Topic.

by Practical Law Intellectual Property & Technology
Published on 09 Feb 2016 • USA (National/Federal)
The US Supreme Court has agreed to consider certain important questions concerning inter partes reviews, which are conducted by the Patent Trial and Appeal Board (PTAB), a tribunal within the US Patent and Trademark Office. The decision may potentially have a major impact on the conduct of these proceedings and patent practice generally. Unsure what this may mean to your clients or practice? Practical Law has resources to help you get up to speed on the PTAB and these proceedings.
On January 15, 2016, the US Supreme Court granted Cuozzo Speed Technologies' petition for a writ of certiorari seeking consideration of:
(See Cuozzo's Cert. Petition.)
Because of these questions' importance, the Supreme Court's decision in this case may potentially have a major impact on the future conduct of PTAB proceedings and patent practice in general.
This matter arose out of an IPR petition Garmin International filed with the PTAB concerning certain claims in a Cuozzo patent. The PTAB:
  • Instituted the IPR.
  • Applied the broadest reasonable interpretation (BRI) standard to construe the claims, which differs from the standard applied in district court litigation.
  • Issued a final decision finding the claims obvious.
For more information on the original IPR proceeding, see Legal Update, PTAB's First Inter Partes Review Holds Cuozzo's Patent Claims Unpatentable as Obvious Over Prior Art.
Cuozzo appealed the PTAB's decision. The US Patent and Trademark Office (USPTO) intervened and Garmin withdrew from the appeal as part of its settlement agreement with Cuozzo. On appeal, Cuozzo argued that:
  • The USPTO improperly instituted the IPR.
  • The PTAB should not have construed the claims using the BRI standard.
The Federal Circuit rejected both of Cuozzo's arguments concluding, among other things, that:
  • Section 314(d) of the Patent Act prohibits the Federal Circuit from reviewing the PTAB's IPR institution decision, even after a final decision (35 U.S.C. § 314(d)).
  • The BRI claim construction standard is appropriate because:
    • the USPTO has applied this standard for more than 100 years in every proceeding involving unexpired patents and has the authority to adopt this standard; and
    • the patentee has the opportunity to amend claims in an IPR, unlike in district court litigation.
(See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1273 and 1281 (Fed. Cir. 2015) rehearing en banc denied 793 F.3d 1297 (Fed. Cir. 2015).)
For more information on the Federal Circuit's decision, see Legal Updates, Federal Circuit Upholds First AIA Inter Partes Review and Split Federal Circuit Confirms Broadest Reasonable Interpretation Claim Construction Standard in IPR Proceedings.
In seeking Supreme Court review, Cuozzo argued that the Federal Circuit's decision was incorrect because, among other things:
  • The PTAB's use of the BRI standard exceeded its authority and should only be used in an examination proceeding where an applicant has a robust right to amend its claims, not in an adjudicative proceeding like an IPR and federal court litigation, which could lead to different claim constructions for validity and infringement.
  • The AIA provides for appellate review of the PTAB's final written decisions and Section 314(d) of the AIA should be read to allow appellate review of an IPR institution decision at the end of the proceeding even if review cannot be had at the time of the institution decision.
(See Cuozzo's Cert. Petition and Cuozzo's Reply on its Cert. Petition.)
The USPTO argued in opposition to Cuozzo that it is proper to apply the BRI standard primarily because this standard:
  • Is consistent with its longstanding practice, including other post-issuance administrative proceedings, and Congress granted it broad authority to prescribe regulations governing IPR proceedings.
  • Does not depend on whether or not the proceeding is adversarial and even though petitioner's right to amend the claims is more limited in an IPR proceeding, this proceeding is more analogous to initial examination than district court litigation where the claims cannot be amended.
Regarding the Federal Circuit's determination that it does not have jurisdiction to review the USPTO's IPR institution decision, the USPTO principally argued that 35 USC § 314(d) is clear on its face and entirely bars all challenges to the institution decision (see USPTO Opposition to Cert. Petition).
The Supreme Court's decisions on these important questions may have a major impact on proceedings before the PTAB and patent law generally. If you are unsure what this all means to your clients and your practice, let Practical Law help keep you up to speed. Practical Law has several resources concerning proceedings before the PTAB, including IPR proceedings, and patent claim construction. These resources include: