The Supreme Court recently granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Supreme Court agreed to hear two issues appealed by Cuozzo: (1) whether the PTAB should use the broadest reasonable interpretation (BRI) standard for claim construction in IPR rather than the plain and ordinary meaning standard applied in district court; and (2) whether the PTAB’s decision to institute an IPR proceeding should be judicially reviewable on appeal from a final written decision. In its merits brief, Cuozzo argued that the answer to the first question should be “no” and the answer to the second question should be “yes.” The USPTO has now submitted its respondent’s brief on these issues. Argument is set for April 25, 2016.

Issue 1: PTAB’s Use of the BRI Standard

Regarding the first issue, the USPTO argues that the BRI standard is appropriate for IPR proceedings. Contrary to Cuozzo’s position, the USPTO urges that the PTAB’s use of the BRI standard accords with Congress’s design for IPR. First, the USPTO notes that “[t]he PTO has long applied the broadest-reasonable-construction standard in all agency proceedings in which patent claims may still be amended.” By authorizing the patentee to amend its claim during IPR, the USPTO contends Congress incorporated into IPR the principal features that had long justified use of the BRI standard (i.e. claim amendments). The USPTO also asserts the BRI standard is properly utilized during claim construction to choose among interpretations that are consistent with the text of the disputed claim and with the specification. Finally, the UPSTO asserts that, “[a]lthough inter partes review was intended to provide an alternative to costly and time-consuming litigation, it was not supposed to replicate in every instance the results that a district court would have reached.”

Issue 2: Reviewability of the PTAB’s Decisions Whether to Institute

Regarding second issue, the USPTO contends that “[t]he PTO’s threshold decision to institute an inter partes review, which Congress provided ‘shall be final and nonappealable,’ is not subject to review by the Court of Appeals.” According to the USPTO, 35 U.S.C. §314(d) bars all judicial review, not just interlocutory appeals, of the PTO’s decision whether to institute an IPR. The USPTO continues that Section 314’s bar on all judicial review becomes clear after analyzing both its statutory text and the AIA’s underlying purpose to “ensure [ ] that the PTO’s substantive patentability determinations are subject to judicial scrutiny, while avoiding the waste and expense entailed in relitigating threshold questions that do not bear on the proper scope of the patentee’s exclusive rights.”