On January 15, 2016, the U.S. Supreme Court granted certiorari in the patent case Cuozzo Speed Technologies, LLC v. Lee,1 an appeal of the Federal Circuit decision In re Cuozzo Speed Technologies, LLC.2 In the Cuozzo decision, the Federal Circuit decided the first appeal of a Patent Trial and Appeal Board (PTAB) ruling.3 Among the holdings of this case was the determination that the PTAB did not err in construing Cuozzo’s claims using the "broadest reasonable interpretation" (BRI) standard. The Supreme Court’s grant of certiorari raises the question of whether the Court might disagree with the Federal Circuit and hold that the “plain and ordinary meaning” (POM) standard4 used by district courts in construing patent claims is the standard that should be applied by the PTAB in post-grant challenges under the America Invents Act (AIA).

For patentees, the BRI standard5 can result in a broader interpretation of claims, which renders them more vulnerable to prior art attacks. While BRI is theoretically the standard applied by examiners during prosecution, there is no explicit and affirmative record of how claims are construed by the examiner. How the claims—which are very frequently amended during prosecution—are actually construed is arrived at inferentially through analysis of the prosecution history. In contrast, where claim construction is in dispute in an AIA post-grant proceeding, the PTAB will issue a preliminary claim construction in its determination of whether to institute a trial.6 And district courts issue Markman orders on claim construction.7 The patent prosecutor involved in ex parte prosecution, by contrast, is involved in a dance with the patent examiner that is supposed to follow the rules of BRI. But the “elephant in the room” is the enormous success rate of AIA post-grant challenges, showing that 87% of all inter partes reviews (IPRs) result in some or all of a challenged patent’s claims being cancelled. If the examination corps at the U.S. Patent and Trademark Office (USPTO) and the PTAB are each applying the same BRI standard, then this figure seems askew. It is important to note that there are factors other than claim construction in play, such as examiner error in allowing claims or the availability of new and superior prior art.

If the Supreme Court holds that BRI is the appropriate standard, then patent prosecutors can look forward perhaps to a growing body of decisions by the PTAB to help establish claim construction principles for the USPTO examination corps, rendering claim construction less ad hoc and less susceptible to an individual examiner’s personal style. If, on the other hand, the Supreme Court holds that the POM standard applies, then the experience of the district courts in applying Markman over the past two decades will help lead the PTAB toward more balanced statistics.

While patent prosecutors should be aware of how their claims will be interpreted by the examiner and the PTAB when drafting them, there is little that can be prepared for aside from writing clear specifications and claims, making clear arguments, and adhering—to the extent possible—to principles of compact prosecution. In fact, as courts and the PTAB are increasingly admitting, there would be very little difference in the construction under either standard.

Another principle that affects PTAB trial statistics is the burden of proof that falls on the petitioner, as compared to the burden falling on a district court litigant alleging invalidity of an issued U.S. patent. The PTAB uses the “preponderance of the evidence” standard to show the unpatentability of a claim, which amounts to just slightly more than half of the evidence. District courts, because a patent is presumed valid,8 require a showing of invalidity by “clear and convincing” evidence, which is a much higher burden. Obviously, the PTAB standard is much easier to meet for petitioners than the clear and convincing standard in trial courts. But questions have arisen in the context of appeals of USPTO (including PTAB) decisions to the Federal Circuit whether challenges of issued patents at the USPTO should require clear and convincing proofs of invalidity.

The recent case of Dome Patent L.P. v. Lee9 is illustrative. The patentee, who received an adverse decision in ex parte reexamination, filed suit against the USPTO in the U.S. District Court for the District of Columbia under 35 U.S.C. §§ 145 and 306, a venue that was available for such challenges at the time.10 The district court upheld the USPTO in rejecting Dome’s claims as obvious, and Dome then appealed to the Federal Circuit. Dome argued that the district court erred by not requiring the USPTO to use the clear and convincing standard of proof because the action concerned patent claims already issued by the USPTO. The district court disagreed and the Federal Circuit upheld the district court's decision. At the crux of the holding was the fact that the resumption of validity only attaches to an invalidity defense raised to a charge of infringement. Quoting In re Etter, the court held that “[a]n examiner is not attacking the validity of a patent, but is conducting a subjective examination of claims in the light of prior art.”11  

The holding in Dome Patent illustrates that the USPTO needs to demonstrate obviousness only by a preponderance of the evidence, rather than by clear and convincing evidence, because USPTO actions do not involve a defense to a charge of infringement necessary to trigger presumption of validity in 35 U.S.C. § 282 and the attendant “clear and convincing evidence” standard for an invalidity defense.

The Supreme Court’s decision in Cuozzo will not reach or alter the standard of proof needed to prove invalidity at the USPTO, as exemplified in Dome Patent. Thus, challengers will always find a relative advantage in USPTO proceedings compared to district court litigation. Patent prosecutors can help to build a case toward this standard of proof by providing clear, consistent, and accurate disclosure and arguments during prosecution.

Currently, PTAB challenges enjoy a lower standard of proof and a broader claim construction standard that makes it more attractive to challengers. Perhaps the Supreme Court will level the claim construction playing field in Cuozzo, but no matter what the outcome, patent prosecutors mindful of these concepts can help to shore up a patent against challenges that statistically have greatly favored petitioners.