The U.S. Supreme Court granted certiorari to review the standard applied by the U.S. Patent and Trademark Office Patent Trial and Appeal Board for claims construction during inter partes review (IPR) of an issued patent under the America Invents Act (AIA) and also to consider whether a decision by the board to institute an IPR is judicially unreviewable. The filed Petition for Writ of Certiorari is responsive to the Federal Circuit’s decision in In re: Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015), in which the Federal Circuit affirmed the claims construction standard for an IPR as the “broadest reasonable interpretation” standard and further held that the board’s decision to institute an IPR is judicially unreviewable.

In its petition, Cuozzo Speed Technologies, LLC argues that the board’s practice of construing claims under the “broadest reasonable interpretation” standard during AIA reviews, such as IPRs, allows for “differing determinations of validity in IPR proceedings and litigation,” potentially leading to inconsistent claims construction for a given patent under review. Cuozzo asserts that the “plain and ordinary meaning” standard applied by U.S. district courts, not the “broadest reasonable interpretation” standard, should apply to IPRs and that the “broadest reasonable interpretation” standard is only appropriate during patent prosecution and other situations in which there is an opportunity to amend patent claims. In addition, Cuozzo further challenges the Federal Circuit’s ruling that the board’s decision to institute an IPR is judicially unreviewable.

The U.S. Supreme Court’s acceptance of certiorari is indicative of the need and importance to settle the debate on both the proper claims construction for, and judicial review of the board’s decisions to institute, IPRs. According to Cuozzo’s petition, patent challengers have filed over 3,400 petitions since the inception of IPRs, and nearly 85 percent of the IPRs have resulted in the cancellation of some or all of the claims under review. If the U.S. Supreme Court ultimately reverses the Federal Circuit decision and determines that the claim interpretation standard in an IPR should be the district courts’ “plain and ordinary meaning” standard, the claim cancellation rate will, in all likelihood, decrease. The board’s application of the more narrow “plain and ordinary meaning” claim interpretation during an IPR would not allow patent challengers to invoke as broad of a prior art reference as allowable under the currently applied “broadest reasonable interpretation” standard, making cancellation of claims more difficult.

If the U.S. Supreme Court also ultimately rules that the decision to institute an IPR is judicially reviewable, the number of IPRs may accordingly decrease. If the board’s decision to institute an IPR can be overturned on appeal, the board will be compelled to apply greater scrutiny to, and to be more selective in, instituting IPRs.

The upcoming U.S. Supreme Court decision will greatly affect the legal landscape for IPRs, both in the number of IPRs instituted and, potentially, the percentage of claims canceled during an IPR.