On January 15, 2016, the U.S. Supreme Court decided to review whether the Patent Trial & Appeal Board (“PTAB”) has been using the correct standard to construe patent claims in post-grant proceedings. The PTAB construes claims according to their “broadest reasonable interpretation” (“BRI”). By contrast, the claim construction standard applied by district courts follows Federal Circuit precedent focusing on the ordinary and customary meaning of claim terms to a person of ordinary skill in the art.

Cuozzo Speed Technologies LLC (“Cuozzo”) filed a petition for a writ of certiorari in October of last year, asking the Supreme Court for this review.  Cuozzo was the first patent owner to have a patent invalidated in a post-grant proceeding under the America Invents Act (“AIA”).  It urged in its petition that the BRI standard used by the PTAB has increased the likelihood that patents will be invalidated in a post-grant proceeding because, inter alia, terms can be construed more broadly under that standard than under the one used by the district courts.

A divided Federal Circuit panel decided last year that, although the AIA does not specify a claim construction standard, the PTAB’s use of the BRI standard is correct. That panel noted that Congress provided “no indication that the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years.” The BRI standard is used in examination, re-examination, reissue, and interference proceedings.  Mirroring the panel split, the full Federal Circuit denied en banc review in a 6-5 decision.

If the Supreme Court ultimately decides that the PTAB should not use the BRI standard in post-grant proceedings, the rate at which the PTAB invalidates patent claims could significantly decrease, while the burden of briefing claim construction issues significantly increases. Claim construction arguments before the PTAB have typically been relatively limited, often relegated to a paragraph or two.  If the PTAB begins applying the more nuanced district court standard for claim construction, petitioners and patent owners alike will need to expand their treatment of claim construction issues in post-grant proceedings.  This may involve both additional pages of briefing and the addition of expert declarations to address claim construction issues.