On January 15, 2016, the U.S. Supreme Court granted a petition for certiorari in Cuozzo Speed v. Lee. At issue in the case is the standard by which claims are construed at the PTAB in AIA reviews.
A 2-1 panel of the Federal Circuit decided to allow the PTAB, in an AIA proceeding, to construe claims according to the same “broadest reasonable interpretation” used by patent examiners during the prosecution of a patent application. In contrast, federal district courts construe the claims of an issued patent in specialized Markmanhearings to determine their “ordinary and customary meaning.” Federal district courts also give issued patent claims the presumption of validity, which is not given by the PTAB. A sharply divided 6-5 decision of the Federal Circuit denied en banc rehearing of the panel decision.
The Justices may finally address the disparity of outcomes between different tribunals on the same issued patent. Judge Pauline Newman of the Federal Circuit, who wrote dissents in both the original panel decision and the en banc rehearing denial, has long decried forum shopping and the lack of consistent standards from one adjudicatory forum to another. Judge Newman's en banc dissent emphasized that there is no judicial or USPTO guidance as to the meaning of “broadest reasonable interpretation," and that the resultant lack of certainty as to the meaning of issued patents risks billions of dollars invested annually in those patents. For example, the Federal Circuit just recently issued an opinion in Microsoft Corporation v. Proxyconn, Inc., which merely held that the broadest reasonable interpretation cannot be “unreasonably broad.”
The Cuozzo Court will also consider the reviewability of PTAB institution decisions. Cuozzo argued that the “final and nonappealable” nature of the institution decisions applies only to interlocutory appeals while the AIA review is still being conducted. The Federal Circuit held that the institution decision itself cannot be challenged at any time.