Potential Havoc At The PTAB

The US Supreme Court granted certiorari on issues that could wreak havoc with pending patent cases

Last Friday, the Supreme Court of the United States (SCOTUS) granted certiorari to consider two hotly contested issues that may have a very strong impact on inter partes reviews (IPR)1 at the Patent Trial and Appeal Board (PTAB).

The first issue centers on the appropriate claim construction standard to be used in AIA trials, specifically: Whether the Court of Appeals for the Federal Circuit (CAFC) erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation (BRI) rather than their plain and ordinary meaning.

The second issue involves judicial review of final and non-appealable decisions, specifically: Whether the CAFC 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.2

A decision in the affirmative could wreak havoc for those parties with AIA trials pending at the United States Patent and Trademark Office (USPTO) or appeals pending before the CAFC. The SCOTUS decision could result in expensive rebriefing and reversals, which may lead some to seek a legislative remedy to avoid this tumult.

Background

When Congress enacted the AIA, it did not expressly define the claim construction standard to be used for AIA trials, but delegated to the USPTO broad authority to "prescribe regulations ... establishing and governing inter partes review."3 The USPTO decided to use BRI for several reasons. First, Congress required the PTAB to decide "patentability,"4 not validity as district courts do, so the USPTO chose to use the same claim construction standard that it uses in other proceedings deciding patentability. Second, the USPTO wanted to maintain its 30-year precedent of claim interpretation across multiple related or merged proceedings (such as reexaminations and reissues). Third, the patent owner may motion to amend claims during AIA trials. The use of BRI in AIA trials has been very controversial, however. Critics argue that the BRI standard is not justified because the PTAB, which hears AIA trials, denies the vast majority of motions to amend and that the distinction between patentability and invalidity has led the PTAB to cancel claims that a district court could have upheld. District courts determine validity based on the...