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.
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.