High Court to Consider Patent Trial & Appeal Board (PTAB) Procedures

At 1PM today, the Supreme Court of the United States will hear arguments in Cuozzo Speed v. Lee.  As previously discussed, in its petition for certiorari  Cuozzo presents two issues for review:

  1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.  
  2. Whether the court of appeals 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.

Cuozzo argues on question (1) that since Inter Partes Review (IPR) is "adjudicative" and not "examinational" that use of the broadest reasonable interpretation (BRI) is improper. In its Reply Brief of April 15th, (here), Cuozzo has doubled-down on this argument despite the fact that The USPTO has employed BRI in patent interference (adjudicative proceeding) for decades.  As done in its opening brief, Cuozzo again attempts to downplay the patent interference inconsistency in a footnote. 

My prediction is that BRI is left undisturbed.  Whether by virtue of the rule making authority conveyed to the USPTO in the America Invent's Act (AIA), or policy grounds (ability to amend), its hard to imagine a different outcome. Especially given the fact that both BRI and Philipps frameworks employ "plain meaning" in any event. (see thecolorful debate on IPWatchdog.com on this topic).

As to Question (2), the outcome here is anyone's guess.  While I tend to agree with Judge Newman that the statute makes more sense from an interlocutory perspective, it will be hard for the Court to stray from the clear terms of the statute.  Cuozzo argues the other side of  "plain meaning" here.