Cuozzo And Dome Patent: Unpacking Claim Construction Standards And Burdens Of Proof In Patentability And Validity Analyses

On January 15, 2016, the U.S. Supreme Court granted certiorari in the patent case Cuozzo Speed Technologies, LLC v. Lee,1 an appeal of the Federal Circuit decision In re Cuozzo Speed Technologies, LLC.2 In the Cuozzo decision, the Federal Circuit decided the first appeal of a Patent Trial and Appeal Board (PTAB) ruling.3 Among the holdings of this case was the determination that the PTAB did not err in construing Cuozzo's claims using the "broadest reasonable interpretation" (BRI) standard. The Supreme Court's grant of certiorari raises the question of whether the Court might disagree with the Federal Circuit and hold that the "plain and ordinary meaning" (POM) standard4 used by district courts in construing patent claims is the standard that should be applied by the PTAB in post-grant challenges under the America Invents Act (AIA).

For patentees, the BRI standard5 can result in a broader interpretation of claims, which renders them more vulnerable to prior art attacks. While BRI is theoretically the standard applied by examiners during prosecution, there is no explicit and affirmative record of how claims are construed by the examiner. How the claims—which are very frequently amended during prosecution—are actually construed is arrived at inferentially through analysis of the prosecution history. In contrast, where claim construction is in dispute in an AIA post-grant proceeding, the PTAB will issue a preliminary claim construction in its determination of whether to institute a trial.6 And district courts issue Markman orders on claim construction.7 The patent prosecutor involved in ex parte prosecution, by contrast, is involved in a dance with the patent examiner that is supposed to follow the rules of BRI. But the "elephant in the room" is the enormous success rate of AIA post-grant challenges, showing that 87% of all inter partes reviews (IPRs) result in some or all of a challenged patent's claims being cancelled. If the examination corps at the U.S. Patent and Trademark Office (USPTO) and the PTAB are each applying the same BRI standard, then this figure seems askew. It is important to note that there are factors other than claim construction in play, such as examiner error in allowing claims or the availability of new and superior prior art.

If the Supreme Court holds that BRI is the appropriate standard, then patent prosecutors can look forward perhaps to a growing body of decisions by the PTAB to help establish claim construction...