The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

In 2012, the Patent Trial and Appeal Board (PTAB or The Board) was formed, and petitioners have since then had the opportunity to challenge patents before the Board in inter partes review, covered business method review, or post grant review proceedings. Inter partes reviews have been relatively successful for petitioners, as approximately 70% of petitions have been instituted, and of those, about 90% of those petitions have resulted in at least one canceled patent claim. One of the factors behind the petitioners’ success rate is the “broadest reasonable interpretation” (BRI) standard that is the claim construction standard in inter partes review.

BRI, applied by the Board, is not the same standard applied by the district courts. The district courts apply the standard of “plain and ordinary meaning,” as set forth in Phillips v. AWH Corp., and is a narrower standard.

The Supreme Court granted certiorari, a review of a decision by a lower court, in Cuozzo Speed v. Lee in January 2016 to review the Federal Court’s decision upholding the Board’s use of the BRI standard. Cuozzo, the petitioner, maintained that the Board’s BRI standard is improper and that the Board’s decision to institute trial be reviewable on appeal. The Supreme Court will review these issues of whether it is appropriate for the Board to use a different claim construction standard than that used in federal district court, and whether an institution decision could be subject to judicial review. As written in the petition for certiorari:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

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.”

The Supreme Court’s decision of the second issue at hand may have a large impact. By applying the BRI standard, the Board broadens the scope of patent claims during interpretation, which may lead to the claims being more susceptible to invalidation. Other problems may arise by there being two standards, which could lead to some inconsistency in the interpretation of patent claims.

 

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