Patent Bar Anxious for High Court Review of PTAB Ground Rules

On January 15, 2016, the Supreme Court took on In re Cuozzo Speed Technologies, the very first inter partes review (IPR) case decided by the Patent Trial and Appeal Board (PTAB). The Supreme Court agreed to decide whether the PTAB may use a broader claim construction standard than the one used by Article III courts and the International Trade Commission. The high court also will decide whether the PTAB's threshold decision to institute an IPR proceeding is final and nonappealable. The Recorder reached to Finnegan attorney Erika H. Arner for her insight into the case.

Arner believes that the claim construction standard rarely determines the outcome of a PTAB decision and that the PTAB and the Federal Circuit often note in decisions that the outcome would be the same under either standard. Regarding the second question presented by Cuozzo's petition, which addresses the reviewability of the decision to institute proceedings, Arner believes it has more potential to produce shock waves.