Tagged with Cuozzo

En Banc Federal Circuit to Decide Reviewability of PTAB Time-Bar Decisions

Authors: James D. Stein
Editor: Jason E. Stach

The Federal Circuit has found that it may not review a PTAB determination that an IPR petition was timely-filed within 35 U.S.C. § 315(b)’s 1-year bar. Achates Reference Publishing Inc. v Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The law may soon change, as the Federal Circuit recently granted Wi-Fi One’s petition for rehearing en banc of its September decision that it may not review the PTAB’s finding that Broadcom’s IPR petitions were not time-barred. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Jan. 4, 2017). Continue reading

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Supreme Court Affirms Cuozzo : Agrees on BRI and Reviewability of Post-Grant Proceedings

Author: Ashley M. Winkler
Editor: Aaron J. Capron

Earlier this week, in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. __ (2016), the Supreme Court issued its first decision reviewing post-grant proceedings created by the America Invents Act (AIA) and affirmed the Federal Circuit in the two questions on appeal. Both issues challenged provisions of the AIA. First, the Court considered whether 35 U.S.C. § 314(d) bars judicial review of decisions to institute post-grant proceedings by the United States Patent and Trademark Office (USPTO). Second, the Court reviewed whether the rulemaking authority in 35 U.S.C. § 316(a)(4) permits the USPTO to regulate application of the broadest reasonable interpretation standard (BRI) during claim construction before the Patent Trial and Appeal Board (PTAB).

Reviewability of Post-Grant Proceedings

The Court held that “Section 314(d) bars . . . challenge[s] to the Patent Office’s decision to institute inter partes review.” Writing for the Court, Justice Breyer noted that the text of § 314(d) expressly states that institution decisions “shall be final and nonappealable.” The Court stated that interpreting this language to allow judicial review would “undercut one important congressional objective, namely, giving the Patent Office significant power to revisit and revise earlier patent grants.”

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USPTO Submits Respondent’s Brief to High Court

Author: Saba N. Daneshvar
Editor: James D. Stein

The Supreme Court recently granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Supreme Court agreed to hear two issues appealed by Cuozzo: (1) whether the PTAB should use the broadest reasonable interpretation (BRI) standard for claim construction in IPR rather than the plain and ordinary meaning standard applied in district court; and (2) whether the PTAB’s decision to institute an IPR proceeding should be judicially reviewable on appeal from a final written decision. In its merits brief, Cuozzo argued that the answer to the first question should be “no” and the answer to the second question should be “yes.” The USPTO has now submitted its respondent’s brief on these issues. Argument is set for April 25, 2016.

Issue 1: PTAB’s Use of the BRI Standard

Regarding the first issue, the USPTO argues that the BRI standard is appropriate for IPR proceedings. Contrary to Cuozzo’s position, the USPTO urges that the PTAB’s use of the BRI standard accords with Congress’s design for IPR. First, the USPTO notes that “[t]he PTO has long applied the broadest-reasonable-construction standard in all agency proceedings in which patent claims may still be amended.” By authorizing the patentee to amend its claim during IPR, the USPTO contends Congress incorporated into IPR the principal features that had long justified use of the BRI standard (i.e. claim amendments). The USPTO also asserts the BRI standard is properly utilized during claim construction to choose among interpretations that are consistent with the text of the disputed claim and with the specification. Finally, the UPSTO asserts that, “[a]lthough inter partes review was intended to provide an alternative to costly and time-consuming litigation, it was not supposed to replicate in every instance the results that a district court would have reached.”

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