Stakeholders Review PTO Counter Arguments in High Court Review Cuozzo AIA Questions

On January 15, 2016, the Supreme Court granted two questions in Cuozzo Speed Technologies' petition for review in Cuozzo Speed Techs., LLC v. Lee. According to stakeholders commenting on the Court's decision to review how post-grant proceedings under the America Invents Act (AIA) are being handled and reviewed, the U.S. Patent and Trademark Office is fighting battles that may not be worth it. Bloomberg BNA contacted Finnegan attorneys Erika H. Arner and James D. Stein for their thoughts on the case.

In response to the first question in Cuozzo's petition, which asked if the Patent Trial and Appeal Board (PTAB) can construe claims in a patent challenge under the AIA according to their broadest reasonable interpretation (BRI) rather than their plain and ordinary meaning, Stein said, "The BRI standard focuses on the words of the claims in light of the specification; nothing else matters. It does not take into account the patent’s prosecution history, disclaimers or disavowals, claim differentiation, agreements between parties litigating the patent and extrinsic evidence. All of this can have a big impact under the Phillips standard, resulting in a narrower construction for infringement and validity in district court than would result in the Patent Office under the BRI."

Arner specifically addressed the second question in the petition:

Is the U.S. Court of Appeals for the Federal Circuit correct when it says it cannot review a losing party's appeal of the PTAB’s decision to institute an AIA-enabled inter partes review (IPR) proceeding?

She said, "So far, the Federal Circuit has shown extraordinary deference to what I call 'institution-related' determinations—the many different issues decided at the time of institution. While that may be appropriate for some things like the application of prior art, it seems odd in cases where the board’s jurisdiction is questioned, like when the one-year time bar is violated. Denying review of these types of issues runs against the general presumption that judicial review should be available to provide a check on agency actions."