Archives for June 2016


June 20, 2016 — The U.S. Supreme Court issued its decision in Cuozzo Speed Technologies, LLC v. Lee.  The Court unanimously affirmed the USPTO’s application of the broadest reasonable interpretation (BRI) standard for interpreting patent claims in an inter partes review (IPR).  The Court agreed with the Federal Circuit that the America Invents Act’s (AIA) statutory framework gave the USPTO the legal authority to apply the BRI standard, and that no AIA provision unambiguously directs the USPTO to use a particular claim construction standard.  The Court also rejected Cuozzo’s argument that IPRs are trial-like proceedings and, thus, the USPTO should use the “ordinary meaning” claim construction standard articulated in Phillips.  In this regard, the Court found that IPRs, in many significant respects, are less like a judicial proceeding and more like a specialized agency proceeding.

A majority of the Court also held that 35 U.S.C. § 314(d) bars Cuozzo’s challenge to the USPTO’s decision to institute the IPR.  Section 314(d) explicitly states that the determination whether to institute an IPR “shall be final and nonappealable.”  Justice Alito, joined by Justice Sotomayor, wrote a dissenting opinion on this point arguing that the statute should properly be read as preventing only interlocutory appeals, but the majority rejected that interpretation holding that it bars interlocutory appeals, as well as later reviews as part of an appeal after the final IPR determination.  Recognizing the “strong presumption” favoring judicial review, the majority emphasized that their interpretation of § 314(d) “applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”  Thus, the Court left open the possibility of an appeal in cases that implicate constitutional questions or that present other questions of interpretation that go well beyond the statutes related to USPTO post grant proceedings.


Oliff Hosts Director of Patents Ombudsman Program

Alexandria – Mr. Anthony (Tony) Knight, Director, Stakeholder Outreach and the Patents Ombudsman Program of the United States Patent and Trademark Office (USPTO) was a guest speaker during a recent CLE seminar hosted by OLIFF PLC.  Tony gave an insightful presentation about the Patents Ombudsman Program.

I want to thank Tony very much for coming over and doing this and we really salute you and the Patent Office for this kind of dialogue.  We pride ourselves in our relationship with the Patent Office and this is a big step forward from our standpoint to keeping these lines of communication open.”
                                                                                                                                   – Jim Oliff

The Ombudsman Program was initiated in 2010 as a way for the USPTO to improve customer service and enhance the USPTO’s ability to assist applicants and their representative with issues that may arise during prosecution of a patent application: “[W]hen there is a breakdown in the normal application process, including before and after prosecution, the Patents Ombudsman Program can assist in getting the application back on track.”