Last week, the United States Patent & Trademark Office filed its merits brief with the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee. Cuozzo previously filed its merits brief on February 22, setting up a clash in viewpoints over basic elements of the post-grant review process established by the AIA. A close look at the wording of the briefs, however, suggests that the resolution of the case may turn on a much more nuanced consideration of whether post-grant trials determine “invalidity” of claims versus “unpatentability.”

In its brief, the PTO defends (1) the PTAB’s use of the “broadest reasonable interpretation” standard to construe patent claims during an IPR proceeding, and (2) the Federal Circuit’s determination that it lacks authority to review whether the PTAB exceeded its statutory authority to institute an IPR proceeding in the first place. The PTO intervened to defend these positions after the parties who filed the IPR petition settled with Cuozzo and withdrew from the case. Cuozzo’s merits brief argues the other side of both issues.

A difference in terminology pervades the briefs. In its brief, Cuozzo repeatedly asserts the PTAB is charged with deciding whether issued patent claims are “invalid.” The PTO, on the other hand, consistently argues the PTAB’s role is to determine whether such claims should be canceled as “unpatentable.” In patent parlance, “patentability” is a term usually used to describe whether a particular invention merits issuance of a patent—such as the PTO’s determination whether a set of claims should be allowed to issue in a patent—whereas “invalidity” of an issued patent is historically a determination left to the courts.

Cuozzo presumably chose to characterize the PTAB’s job as one of adjudicating “invalidity” because it asserts the PTAB should apply the claim construction standard used by the courts, rather than the one the PTO applies in all of its other proceedings. The PTO seems to get the better of this war of words, however, as the IPR provisions of the Patent Statute consistently use the term “unpatentable” to describe the assessment the PTAB is to make.

Oral argument before the Court is set for April 25. Twenty-one amicus briefs have already been filed since the Supreme Court agreed to hear Cuozzo’s case on January 15, and several more are anticipated prior to the March 30 deadline. All briefs can be accessed here. Read our prior posts about Cuozzo, and stay tuned for our continuing analysis.