Archives for January 2016

U.S. Supreme Court Grants Certiorari in Cuozzo Speed v. Lee

On January 15, the U.S. Supreme Court granted certiorari in Cuozzo Speed v. Lee, which marks the first time the Court will review a decision from the Patent Trial and Appeal Board (PTAB) in an America Invents Act (AIA) proceeding. The petition for certiorari presented two questions:

  1. Whether the [Federal Circuit] 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 [Federal Circuit] 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.

Last year a Federal Circuit panel determined that there was implicit congressional authorization of the broadest reasonable interpretation standard in the AIA and, regardless, “the standard was properly adopted by PTO regulation.” The panel also held that it lacked jurisdiction to review the PTO’s decision to institute the IPR, concluding that 35 U.S.C. § 314(d) “prohibits review of the decision to institute IPR even after a final decision.” Judge Newman dissented on both issues and argued, among other things, that use of the broadest reasonable interpretation standard “distorts, indeed defeats, the [AIA] legislative purpose of providing an administrative surrogate for district court determination of patent validity.” In a split 6-5 decision, the full Federal Circuit also denied Cuozzo’s petition for en banc rehearing.

Our February 10, 2015, Special Report on the original panel decision can be found here, and Cuozzo’s petition for a writ of certiorari can be found here.

Federal Circuit Upholds PTAB Decision Denying Timely Motion to File Supplemental Information in an IPR

In a December 31 precedential decision, the Federal Circuit upheld a decision of the Patent Trial and Appeal Board (PTAB) denying a petitioner’s motion to file supplemental information in an Inter Partes Review trial. The motion met the two requirements of 37 CFR § 42.123(a), i.e., that it be filed within one month of the date the trial is instituted, and that it be relevant to a claim for which the trial has been instituted. The petitioner admitted to the PTAB that it intentionally delayed filing the additional information to save costs, but argued that the reason for its delay was not relevant under § 42.123(a). In particular, the petitioner argued that the PTAB conflated § 42.123(a) with other parts of § 42.123 that required, inter alia, that the supplemental information reasonably could not have been obtained earlier. The Federal Circuit held that the PTAB did not abuse its discretion in denying the motion. Particularly, it found that the PTO must be given deference in interpreting its own regulations regarding PTAB proceedings, including that the regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” The Federal Circuit ruled that the PTO’s rules make sense, as they are designed to encourage submission of “all of the evidence that supports the ground of unpatentability” at the petition stage. The court found that the PTAB was justified in finding that cost-savings was not a sufficient reason for granting the motion.  Click here for our detailed summary of this decision.