Institutional Change: PTAB Issues to Watch in 2016

Patent Trial and Appeal Board (PTAB) petition filing has increased every year since the proceedings became available in 2012. However, near the end of 2015, the pace began to slow down and that trend has continued into the first quarter of 2016. Despite the current steady pace of petition filing, the demand for PTAB proceedings is not expected to fade. Several PTAB cases are expected to set the stage in providing clarity on a number of issues.

For example, Cuozzo Speed Technologies v. Lee is expected to have a significant impact. Is it the appeal of the first inter partes review (IPR) ever filed and in January 2016, the Supreme Court granted cert. The Court will rule on the questions of whether the broadest reasonable interpretation (BRI) should be used in IPRs (rather than the Philips standard, which is used in district courts) and whether the PTAB’s decision to institute an IPR is judicially reviewable. Managing Intellectual Property contacted Finnegan attorney Erika H. Arner for her thoughts on the issues in question in the Cuozzo case.

Arner said, "It is very rare that there is a significant difference between the two [standards] that would matter to the outcome of a case. To me, the debate over BRI does seem a bit academic because in so many cases the outcome will be the same whether you use broadest reasonable interpretation or the district court claim construction."

Regarding the second question in Cuozzo as to whether the institution decision is appealable, Arner said, "That is unusual in our system in general. The Federal Circuit and the Patent Office have read that to cover a broad variety of things. So the second question is really asking whether they are reading the statute correctly. If the Patent Office instituted something that is plainly outside its jurisdiction, did Congress really mean the courts can’t help and there is no check on that?"