Intellectual Property Client Alert - March 2016

2016 Supreme Court Intellectual Property Cases The U.S. Supreme Court granted certiorari in the patent case of In re Cuozzo Speed Techs., LLC, 115 U.S.P.Q.2D (BNA) 1425, 793 F.3d 1268, (Fed. Cir. 2015), regarding the different claim construction standards in the Patent Trial and Appeal Board (PTAB) and the U.S. District Courts. The Supreme Court also agreed to hear a case addressing the appropriate standard in awarding attorneys' fees to a prevailing party under Section 505 of the Copyright Act in John Wiley & Sons, Inc. v. Kirtsaeng, 713 F.3d 1142, (2d Cir. 2013).

In In re Cuozzo, there was a 2-1 decision (Judge Dyk for the Court, joined by Judge Clevenger, Judge Newman dissenting) which held that the PTAB's use of the "broadest reasonable interpretation" standard for claim construction was proper, and agreed that the three claims in suit were invalid for obviousness, meaning that the standard for claim construction is different at the PTAB than the "plain and ordinary meaning" standard used in the federal district courts.

In the Cuozzo case, the questions to be addressed are: 1) can inter partes review (IPR) proceedings at the PTAB have claims construed according to their broadest reasonable interpretation rather than their plain and ordinary meaning as used in federal court proceedings; and 2) is the PTAB's decision to institute an IPR proceeding reviewable.

In Cuozzo, the Federal Circuit panel decision held that 1) the PTAB can use the broadest reasonable interpretation, while federal courts can use the plain and ordinary meaning standard, and 2) 35 U.S.C. 314(d) bars it from reviewing a PTAB decision to institute an IPR, even if the issue is raised in an appeal of a PTAB final decision, meaning that institutional decision is not reviewable.

While the dual system of claim construction is present in the statutory construct noted above, it will be interesting to see how the Supreme Court addresses the issue which has caused significant debate among patent practitioners. The Supreme Court could find that Congress intended the dual system, and that claims found valid from an IPR are unlikely to be found invalid in a federal district court, thereby remaining valid. The Supreme Court may also find the dual system to be not supportable and offer new standards. Also, the Supreme Court will be considering the question of whether the decision to institute or not institute an IPR proceeding is or is not judicially reviewable under the statute.

The...