Delving Deeper into the Legal Implications of SC’s Conclusion on the Cuozzo Case
On June 20, 2016, the U.S. Supreme Court in its Cuozzo Speed Technologies, LLC v. Lee decision upheld the authority of the Patent Trial and Appeal Board (Board) to use the Broadest Reasonable Interpretation (BRI) standard for claim interpretation during inter partes review (IPR) proceedings. The Court also affirmed the Federal Circuit's holding that the America Invents Act does not permit appeal of the Board's decision to institute an IPR under 35 U.S.C. § 314(d).
In this LIVE Webcast, a panel of thought leaders and professionals assembled by The Knowledge Group will provide the audience with an in-depth analysis of the important issues, particularly legal implications, of the Supreme Court’s rulings in Cuozzo. Speakers will highlight notable developments and insights of this significant topic.
Key topics include:
- Cuozzo Speed Technologies, LLC v. Lee - Legal Implications
- Broadest Reasonable Interpretation (BRI) Standard
- Appeal of Decision to Institute
- Notable Court Decisions
- Recent Trends and Developments
Alyssa K. Sandrowitz, Counsel
- The Supreme Court’s decision in Cuozzo has been widely touted as affirming as holding that the AIA does not permit appeals of the PTAB’s decision to institute an IPR under 35 U.S.C. § 314(d). While the Court found the that the “no appeal” provision of the statute, that the AIA gave “the Patent Office significant power to revisit and revise earlier patent grants,” along with the Administrative Procedure Act points to precluding review, the Court did emphasis it is not a categorical preclusion. The Court stressed that its holding applies to where the grounds for challenging the institution decision consist of questions that are tied to applications and interpretation of the statutes regarding institution (i.e. a challenge to the PTAB’s determination that the petition showed a reasonable likelihood of success with respect to at least 1 challenged claims). The Court left the open for door for appeals in other instances that implicate constitutional questions or when the PTAB acts outside its statutory limits.
- Provide examples of instances where decisions to institute may still be appealable under Cuozzo
- NOTE: Fed. Cir. granted en banc review on Jan 4, 2017 to whether PTAB decisions on the time bar are appealable.
- Present Fed. Cir. PTAB Appeal stats
- # of appeals decided
- Rate of every issue affirmed, rate of every reverse or vacated, rate of mixed out, rate of dismissal
- # of Rule 36 affirmance vs. # of written opinions
- # of appeals decided
Douglas Wilson, Partner
Heim, Payne & Chorush LLP
- The Supreme Court held that adoption of the broadest reasonable interpretation standard is proper rulemaking by the Patent Office under Chevron. The Supreme Court even held that it was a reasonable exercise of the Patent Office’s discretion. Assuming that the Supreme Court was correct that Congress intentionally left the policy decision of what claim construction standard should be employed in inter partes review (as well as other reviews) to the Patent Office’s discretion, should Congress revisit this issue? Here are some observations on IPR and the policy of broadest reasonable interpretation: (1) invalidation rate in IPR versus district court litigation; (2) significance of the claim construction standard in those decisions; and (3) fairness of interpreting claims one way for infringement and another way for validity (the proverbial nose of wax).
- In reaching its decision that ordinary institution decisions by the Patent Trial and Appeal Board are not subject to judicial review, the Supreme Court observed that the America Invents Act contained an important congressional objective of “giving the Patent Office significant power to revisit and revise earlier patent grants.” Taken in the context of the Court’s opinion, this message raises several important questions about the scope of the Patent Office’s power to institute inter partes reviews (as well as post grant and covered business method reviews) and the extent to which error in the Patent Office’s application of the statute can be remedied. Four questions that can be raised are: (1) Can the Patent Office institute a review on unchallenged claims; (2) can the Patent Office rely on evidence or arguments not cited by the petitioner; (3) can the Patent Office deny institution based on a broader interpretation of the estoppel statutes than the federal courts employ; and (4) can the Patent Office, for example, institute an IPR based on a petition filed more than one year after a party is served with a complaint?
Who Should Attend:
- Patent Lawyers
- Patent Owners
- Patent Holders
- In-house Counsel
Alyssa Sandrowitz is counsel with Polsinelli and has been helping clients develop and execute comprehensive patent strategies for over a decade. She focuses her practice in a broad spectrum of patent law, including patent litigation and post-grant proceedings. She uses her engineering background to represented clients in a variety of technologies including semiconductor design and fabrication, LCD devices, medical devices, consumer products in both district courts and before the U. S. Patent and Trademark Office.
Alyssa Sandrowitz is counsel with Polsinelli and has been helping clients develop and execute comprehensive patent strategies for over a …
Douglas Wilson is a partner with Heim, Payne & Chorush, LLP. He focuses on patent, trade secret, and antitrust litigation as well as inter partes review proceedings in a variety of technical fields including computer hardware, software, mechanical industries, including down hole tool technology, and pharmaceutical technology. He has represented clients in district and appellate courts as well as before the U.S. Patent and Trademark Office Patent Trial and Appeal Board. Before the PTAB, he helped secure the first inter partes review final written decision affirming the patentability of all challenged claims. He also clerked for the Honorable Richard Linn on the U.S. Court of Appeals for the Federal Circuit.
Douglas Wilson is a partner with Heim, Payne & Chorush, LLP. He focuses on patent, trade secret, and antitrust litigation …
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NASBA Field of Study:
Business Law - Technical
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About Heim, Payne & Chorush LLP
Heim, Payne & Chorush LLP is an intellectual property litigation boutique that focuses primarily on patent litigation and antitrust litigation involving patents. The firm represents clients across the spectrum from large entities to individual inventors in a range of technology areas and represents both plaintiffs and defendants. HPC’s attorneys possess a broad spectrum of technical expertise, and a high percentage are former federal appellate or district court clerks. HPC prides itself on handling litigation efficiently because it generally prefers fee arrangements where its interests are aligned with the client’s.