Will SCOTUS Provide Guidance on Judicial Review and Claim Construction for IPR Proceedings?

On November 9, 2015, the New York Intellectual Property Law Association filed an amicus brief in support of the petition for a writ of certiorari in Cuozzo Speed Technologies, Inc. v. Lee, No. 15-446. Dorothy Auth, President of the NYIPLA, as well as Eugene Gelernter, Irena Royzman, Jason Vitullo, Charles R. Macedo and David Goldberg were authors on the brief. Charles R. Macedo, Irena Royzman and David Ryan are Co-Chairs of NYIPLA’s Amicus Briefs Committee and Robert Isackson is the NYIPLA Board Liaison.

The NYIPLA asks the Court to grant the petition in order to “make clear that judicial review is available when the PTO institutes an IPR proceeding and invalidates patent claims in violation of its statutory authority, and to determine the claim construction standard that the PTO should apply to determine patent validity.”

The NYIPLA explains that the Supreme Court’s review of both questions is critical at this juncture since to “a large and increasing extent, IPRs are supplanting district court litigation as the forum for resolving issues of patent validity based on the prior art,” and in proceedings below “the Panel was split 2-1 with a vigorous dissent on both issues, and the Federal Circuit then split 6-5 in denying a petition for rehearing en banc.”

The following are excerpts taken from the NYIPLA’s brief.

Judicial Review

This Court should grant the petition for a writ of certiorari to clarify that PTO decisions invalidating patents on grounds that exceed the PTO’s statutory authority are subject to judicial review, not immune from it.

The PTO may only institute an IPR proceeding based on “the information presented in the petition” and any response thereto. 35 U.S.C. § 314(a). It is improper for the PTO to institute an IPR—and proceed to issue a final decision adjudicating the validity of patent claims—on grounds that do not appear in the petition.

The AIA provides that the Federal Circuit may review final decisions in an IPR. 35 U.S.C. § 319. Although the AIA does not permit interlocutory appeals from decisions to institute an IPR, nothing in the statute precludes the Federal Circuit from considering whether the patent was found invalid on grounds exceeding the PTO’s authority in a proceeding that was unlawfully instituted.

Congress did not intend the prohibition on interlocutory review set out in § 314(d) to serve as a blank check that would allow the PTO to freely rewrite its statutory authority, and to institute and decide IPRs on grounds not permitted by the AIA. To the contrary, § 319 ensures that if the PTO exceeds its statutory authority in invalidating patent claims, these issues are subject to review by the Federal Circuit in an appeal taken from a final decision.

The Panel decision to the contrary is at odds with the AIA on an issue of exceptional importance to both patent owners and validity challengers.

Claim Construction in IPR Proceedings

The appropriate claim construction standard for IPR is also a critical issue that divided the Federal Circuit and warrants review. The Court’s consideration of this question should be guided by the following inquiry: in an IPR proceeding, does a patent owner have a sufficient opportunity to amend a claim in the event that the PTO’s construction of the claim will render it invalid?

During the iterative process of patent examination, the PTO applies the “broadest reasonable interpretation” (“BRI”) test for claim construction. “The PTO broadly interprets claims during examination of a patent application since the applicant may amend his claims to obtain protection commensurate with his actual contribution to the art.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (citation omitted).

In contrast, during district court litigation, a patent owner is not permitted to amend the issued claims in dispute. A district court accordingly determines the “ordinary meaning” of a challenged claim term to a person of ordinary skill in art pursuant to the guidelines for claim construction set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1321 (Fed. Cir. 2005) (en banc).

In IPR proceedings (unlike original examinations) a patent owner cannot freely amend claims, but rather must move to amend and only one such motion is allowed as of right. See 35 U.S.C. § 316(d)(1). In fact, the PTO recently rejected suggested changes to its regulations which would have provided that “motions to amend should be liberally allowed,” and considered on par with amendments during prosecution. See Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board; Proposed Rules, 80 Fed. Reg. 50,720, 50,723-24 (Aug. 20, 2015).

The question presented here is whether, patent owners involved in an IPR proceeding truly have a “viable opportunity to amend the claims” that is sufficient to warrant application of the BRI standard, as opposed to the Phillips standard that applies in district court litigation and other circumstances in which there is no opportunity for amendment, or some other claim construction standard that the Court concludes is appropriate in light of the unique nature of IPR proceedings. This is a question of great significance, and guidance from this Court is sorely needed.

The Author

Irena Royzman

Irena Royzman concentrates on biotech and pharmaceutical litigation and is Co-Chair of the firm’s Biotechnology Practice. She has successfully represented biotech, pharmaceutical and medical device companies as plaintiffs and defendants in patent litigation on a wide variety of subject matters, such as small molecules, biologics, crystal forms, manufacturing processes, analysis of polymerase chain reaction (PCR) products, genetic transformation techniques, and drug-eluting coatings. Ms. Royzman has significant experience in litigating cases brought under the Hatch-Waxman Act and is also representing an innovator pharmaceutical company in one of the first cases under the legislation for biosimilars (BPCIA). Ms. Royzman holds a Ph.D. in Biology from the Massachusetts Institute of Technology, where she was a NSF fellow and studied the regulation of DNA replication and amplification. Through her research at MIT and the Whitehead Institute, Ms. Royzman has hands-on experience in recombinant DNA technology, cell biology and genetics. CLICK HERE to view Ms. Royzman's firm profile page.

Irena Royzman

Charles R. Macedo is a Partner at Amster, Rothstein & Ebenstein LLP, where he advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. He has successfully recovered domain names registered to others using clients’ trademarks.
Mr. Macedo is also the author of the book, The Corporate Insider’s Guide to U.S. Patent Practice, originally published by Oxford University Press.

For more information or to contact Mr. Macedo, please visit his Firm Profile Page.

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Discuss this

There are currently 12 Comments comments.

  1. Edward Heller November 12, 2015 10:59 am

    How would the claim construction issue affect the result in this case?

  2. Ken November 12, 2015 11:21 am

    Wouldn’t it be prudent for the Supreme Court to wait and see if IPRs get struck down as unconstitutional anyway?

  3. Bart November 12, 2015 12:39 pm

    Unconstitutional….riiiiiight.

    SCOTUS has passed on the BRI issue several times before, don’t hold your breath. Likewise, the PTO using Philipps in IPR wouldn’t change a single result. (as demonstrated for decades in expired patents undergoing reexamination).

  4. Edward Heller November 12, 2015 1:25 pm

    3. Ken, you are right. Someone ought to point out to the court that the Federal Circuit is now considering the constitutionality of IPRs — and should defer all other issues until that issue is vetted.

  5. Gene Quinn November 12, 2015 1:53 pm

    Bart-

    Clearly there is an enormous difference between BRI and the Phillips standard. The only way that Phillips wouldn’t change a single result is if the decision maker has made their mind up before considering the evidence and then writes the decision to support the predetermined conclusion.

    It is interesting that you cite expired patents undergoing reexaminations. It would seem that you are not very familiar with reexamination. To suggest that you can draw any conclusion from reexamination of expired patents is rather ridiculous in my opinion. The sample size is extraordinarily small and statistically irrelevant, particularly when compared with the extreme popularity of IPR.

    -Gene

  6. David November 12, 2015 2:52 pm

    If the SCOTUS starts grating cert on questions of this variety, it will be a very bad sign for the MCM / eCharge Article III challenge.

  7. Anon November 12, 2015 2:52 pm

    I am curious as to the author’s views on what happens if any of these items were to gain traction (or any of the existing or future suits were to prevail)?

    The AIA was deliberately crafted by Congress to sink or swim in its entirety.

    There is no court with authority to “correct” the AIA in a way that effectively rewrites this particular (omnibus) law and achieve something that was expressly deliberated and rejected.

    For arguments sake, let’s say that any one of these items takes a chunk out of the AIA.

    What then?

    (And please note that this is not mere “hand-wringing,” as while I have seen this question bandied about across several fora, I have yet to see an answer that stands up to a critical review).

  8. Ken November 12, 2015 3:35 pm

    “There is no court with authority to “correct” the AIA in a way that effectively rewrites this particular (omnibus) law and achieve something that was expressly deliberated and rejected.”

    I agree with this, but courts often do just this sort of thing anyway.

  9. Bart November 12, 2015 3:39 pm

    Gene,
    The statistical sample of reexams (started in the 1980s) is not as small as you believe. Likewise, the Board has already construed patents using both standards in IPR and come to the same conclusion.

    As to the enormous difference between BRI and Phillips, I’m just not following. A proper Philipps construction is not supposed to be colored by the interest of maintaining validity. So, the only real difference is the decision makers, one forum is technical, the other generalist. Aside from the label that one test, BRI, is the “broadest,” what is the enormous difference in the tests?

  10. Edward Heller November 12, 2015 4:14 pm

    David, excellent point.

  11. David November 12, 2015 4:50 pm

    Thanks Ned. It seems to me that should cert be granted, it would be an implicit acknowledgement by the Court that the claim is properly administrative in the first instance. Obviously, this would not bode well for you or Cooper.

  12. Edward Heller November 13, 2015 6:16 am

    David, I think they should take cert., but defer any decision pending a determination of the constitutional question.

    We should know more in a short time after the Feds decide MCM v. HP.