The Supreme Court is scheduled to hear oral argument in the In re Cuozzo Speed Technologies matter on April 25, 2016—taking on two issues concerning the inter partes review (IPR) process for challenging the validity of a United States patent before the United States Patent and Trademark Office: (1) whether the Patent Trial and Appellate Board (the Board) may construe claims in an issued patent according to their broadest reasonable interpretation (BRI) rather than their plain and ordinary meaning; and (2) whether the Board’s decision whether or not to institute an IPR proceeding is judicially unreviewable.
Most can agree that bestowing the Board with unchecked power as the final arbiter of whether or not to institute an IPR proceeding will have a dramatic and measurable impact on the power of the Board. Weighing the impact of the claim construction standard applied in an IPR, however, is less clear.
On one hand, logic dictates that the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. This is precisely the argument patent owner Cuozzo Speed Technologies, LLC (“Cuozzo”) makes in its opening merits brief to the Supreme Court.
On the other hand, evaluating whether the Board’s use of the BRI protocol in an IPR claim construction will lead to “different results” than the plain and ordinary meaning construction used by federal courts in claim construction is complicated by the relatively scant evidence on the subject, and the inevitable fact that this evidence is naturally dependent on particular prior art and invalidity and obviousness arguments specific to a particular patent. Even putting aside the question of what impact a different claim construction standard may have in an IPR, In re Cuozzo Speed Technologies will not address several powerful differences between an IPR and district court litigation that impact whether a particular patent claim survives. For example, the burden of proof in an IPR is the preponderance of evidence rather than the clear and convincing evidence required in federal court; the presumption of validity of the patent is not assumed in an IPR as it is in federal court; and the ultimate arbiter is an administrative law judge panel with technical training as opposed to the average juror in a patent trial. Against this backdrop, can Cuozzo fairly claim, as it has, that the Board’s broadest reasonable interpretation claim construction standard is a primary reason that nearly 87% of the IPR trials completed to date have resulted in the cancellation of some or all of the claims in patents under review in an IPR proceeding?
Because the initiation of an IPR proceeding itself often either stays the entire concurrent federal court litigation or eventually obviates the need for a Markman hearing in the federal district court, there are not very many instances where an IPR claim construction can be compared to the claim construction order issued by a federal district judge for the same term and patent.
In re Cuozzo Speed Technologies is a perfect example: Cuozzo filed four patent infringement cases for the 6,778,074 patent at issue against Tom Tom, Inc.; JVC Americas Corp.; General Motors Company; and Garmin Int’l Inc. before Garmin petitioned the Board for an IPR. The 6,778,074 patent at issue in the Cuozzo litigations covers a type of speedometer that changes color to indicate to the driver when the speed of their car exceeds the speed limit in a particular geographic area. However, a claim construction order was not issued in any of the district court cases involving this patent—while Markman briefing was complete in at least three of the four litigations pending when Garmin petitioned for an IPR, the district court adjourned any Markman hearings until after the IPR ruling. Notably, there was no claim construction briefing in Cuozzo’s litigation against Garmin.
The claim construction term at issue in the Cuozzo IPR that the Federal Circuit ultimately upheld under the BRI standard, focused on the term “integrally attached” in an independent claim at issue: claim 10 disclosing a colored display showing the current speed limit, where the colored display is “integrally attached” to the speedometer. In the IPR proceeding, Cuozzo modified its proposed construction of the term “integrally attached” from the definition it initially adopted in the federal court litigations. In the federal court litigations where Cuozzo filed claim construction briefs, it defined the claimed speed limit indicator comprising a speedometer “integrally attached” to a color display as: “an instrument with components for measuring and displaying speed that are attached or combined to work as a complete unit with a device for representing information in one or more colors.” In the IPR proceeding, Cuozzo essentially maintained this construction by arguing the term “integrally attached” should be construed as: “joined or combined to work as a complete unit.” Garmin’s proposed construction in the IPR argued that “integrally attached” should be construed as: “discrete parts physically joined together as a unit without each part losing its own separate identity.” In blessing the Board’s adoption of Garmin’s construction of the “integrally attached” term, the Federal Circuit explained, “[t]he word attached must be given some meaning. As the Board explained, it would be “illogical to regard one unit as being ‘attached’ to itself.’” The Federal Circuit also found that the specification further supported the Board’s construction. Unfortunately, there is no real way to try and read the tea leaves here because there is no way to know whether Cuozzo’s construction of “integrally attached” would have been adopted under the plain and ordinary meaning standard of claim construction.
Although they are few and far between, there are cases where a federal district court has issued a claim construction order on the same terms as the Board in an IPR.
In Intellectual Ventures I LLC and Intellectual Ventures II LLC v. Toshiba Corp. et al., Case No. 13-cv-453-SLR, Delaware District Court Judge Robinson issued a claim construction order that construed terms from two patents that the Board had issued final written decisions on in an IPR. Specifically, two of the five patents in Intellectual Ventures case against Toshiba were the subject of IPR trials—U.S. patent numbers 5,500,819 (“the ’891 patent”) and 7,836,371 (“the ’371 patent”). Judge Robinson declined to stay the federal court litigation pending resolution of these IPR trials and noted there would not be a duplication of efforts between the two tribunals because of the different claim construction standards, different standard for burden of proof, and the fact that only two of the five patents at issue were the subject of an IPR trial, whereas Toshiba’s allegedly infringing products were alleged to infringe all five of the patents asserted by Intellectual Ventures. Judge Robinson addressed Toshiba’s argument that denying the stay as to the IPR posed the real possibility that the federal court and PTO could issue inconsistent rulings by explaining that this risk was contemplated before the enactment of the AIA, and observed that this potential risk has not “generated much concern or resulted in . . . ‘awkwardness’ at the Federal Circuit or elsewhere. Indeed, when you keep both the administrative and judicial tracks moving, the competitive business world benefits from the timely presentation of both in the Federal Circuit, the final arbiter of any substantive differences: more information generally makes for a better decision.”
The IPR trial of the ’371 patent at issue in Intellectual Ventures I LLC and Intellectual Ventures II LLC v. Toshiba Corp. et al. used the BRI to interpret the claims at issue. In the IPR, the parties did not disagree with the Board’s preliminary constructions for the claim terms at issue. The Board did not cancel claims 2 and 7-10 of the ’371 patent, and the district court case is set for trial on January 17, 2017, so it will be some time before it is known whether the claims that survived the IPR trial will be found invalid. In the meantime, following the IPR’s final written decision on July 9, 2015 cancelling claims 1-3 and 6 of the ’371 patent, both parties proposed specific claim constructions in the district court litigation for a term found in claim 7: “system operation signals on said system bus during normal system operation.” Judge Robinson’s claim construction order adopted patent owner Intellectual Ventures construction, which was slightly different than the Board’s construction, and quite different from Toshiba’s proposed construction:
|Claim 7: “. . . system operation signals on said system bus during normal system operation . . . .”|
|Board’s Construction in IPR||Toshiba’s Proposed Construction in Delaware district Court||Intellectual Ventures Proposed Constrtiucon Adopted by Judge Robinson in Delaware District Court|
|signals internal to the integrated circuit when the integrated circuit is in a normal operation mode||signals internal to the integrated circuit on said system bus when the integrated circuit is in a normal operation mode and not in a test mode||signals internal to the integrated circuit on said system bus when the integrated circuit is operating normally|
The Board’s construction of the term in claim 7 was not disputed and does not appear relevant to the Board’s finding that claim 7 was not anticipated under 35 U.S.C. § 102. In the Delaware district court, Intellectual Ventures argued that, “Toshiba’s construction makes explicit the distinction in the patent claims and specification that ‘normal system operation’ (normal operation mode) is distinct from debug operation or rest operation (test mode).” Judge Robinson’s claim construction order discusses the fact that the specification describes a “normal mode” and “test mode” which does not define “normal system operations” and declined to import those limitations into the term “normal system operation” set forth in claim 7.
With respect to the ’819 patent still pending in Delaware district court in Intellectual Ventures I LLC and Intellectual Ventures II LLC, the Board ultimately applied the plain and ordinary meaning claim construction standard for the ’819 patent because the ’819 patent had expired, and the Board’s review of the claims of an expired patent tracks the district court’s plain and ordinary claim construction standard articulated in Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005). The Board determined that no express claim construction was required because Toshiba asserted that the claim terms should be given their ordinary and customary meanings and the patent owner Intellectual Ventures did not dispute that conclusion or provide an alternate construction. Although the Board rejected claims 1-11 and 17-19 of the ’819 patent, Judge Robinson issued a claim construction order on terms in claims 17-19 because the Board had not ruled on Intellectual Venture’s request for a rehearing when Judge Robinson issued her claim construction order (and has still not ruled on Intellectual Venture’s request). In the district court litigation before Judge Robinson, both parties elected to submit specific constructions of terms at the claims in issue for the ’891 patent. Judge Robinson’s order adopted Toshiba’s proposed constructions. However, because the Board did not submit any specific claim constructions and assigned their ordinary and customary meanings pursuant to Toshiba’s undisputed request, there is not an opportunity to compare claim constructions by the district court and Board for the ’819 patent.
In at least one instance where the Board has construed a claim differently than the district court, the Board’s construction was articulated by the Board as “consistent with the ordinary and customary meaning of the term as it would be understood by one of ordinary skill in the art[,].” In other words, something very closely approaching the plain and ordinary meaning the district court applies during claim construction. Specifically, in Vibrant Media Inc. v. General Electric, Co. IPR2013-00170, the Board addressed the definition of many terms of U.S. Patent No. 6,581,065 that Delaware District Court Judge Leonard Stark had construed in his claim construction order in the litigation brought by G.E. against Vibrant Media, Inc. and Kontera Technologies, Inc. The ’065 patent at issue involves a system for automatically providing hypertext for character strings of a text file at a content server—such as a system that automatically enters hypertext links like a newspaper article into a computer file. In the IPR, the Board expressly interpreted three claim terms that Judge Stark had already construed and agreed with Judge Stark’s constructions of the terms “class code” and “major class code” that G.E. proposed in its claim construction briefing. In other words, the Board adopted G.E.’s construction of these terms which the district court had expressly adopted. In adopting the district court and G.E.’s construction, the Board found that the district court’s construction would not affect the outcome of the prior art analysis, and petitioner Vibrant Media agreed. However, as to the term “preferred major class code,” the Board rejected the district court’s construction (which had again adopted G.E.’s construction). The Board explained that because the district court’s construction would improperly import a limitation from the specification into the claims, and construed the term “preferred major class code” as a major class code that is desired or given priority, “consistent with the ordinary and customary meaning of the term as would be understood by one of ordinary skill in the art in the context of the written description of the ’065 patent.” On its face, the Board’s construction does not appear to be broader than the construction assigned by the district court.
And in some instances, the Board has outright adopted the same claim construction under the BRI standard as the district court did in applying the plain and ordinary meaning to the disputed claim terms. For example, in Google Inc. v. Simpleair, Inc., CBM2014-00054, the Board adopted the same claim construction for the claim terms in patent 7,035,914 (“the ’914 patent”) under the BRI standard as the district court did in applying the plain and ordinary meaning to the disputed claim terms. In Google’s IPR of the ’914 patent, both parties suggested the adoption of the district court’s construction and the Board agreed, finding the constructions were consistent with the broadest reasonable interpretation. A similar result was reached in Kyocera Corp., Motorola Mobility LLC v. Softview, LLC, IPR201300004? IPR201300257, where the Board issued a final written decision explaining that, “we construed the claim terms as the Petitioner represented they were construed by the district court in copending litigation” because it found the constructions to be “consistent with the broadest reasonable construction.”
Regardless of which way the wind blows in the Supreme Court’s ruling on In re Cuozzo Speed Technologies, the Federal Circuit has itself made clear that even the BRI has bright line rules steeped in well-established patent law principles. Only a few months after upholding the BRI standard for claim construction review in an IPR, the Federal Circuit reversed the Board’s claim construction in both Microsoft v. Proxyconn, 789 F.3d 1292 (Fed. Cir. 2015) and Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1358. (Fed. Cir. 2015). The Federal Circuit clarified that even the BRI has limits, admonishing that although it rejected Proxyconn’s argument that the Board legally erred in using the broadest reasonable interpretation standard during IPRs, “[t]hat is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” The Federal Circuit went on to advise that under the BRI, the Board should read claims in light of the specification and teachings in the underlying patent and consult the patent prosecution history. The Federal Circuit clarified that “[e]ven under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence . . . and must be consistent with the one that those skilled in the art would reach.” According to the Federal Circuit, a construction that is unreasonably broad is one that does not “reasonably reflect the plain language and disclosure” provided in the patent itself.
Notably, when applying the Federal Circuit’s new construction of the terms it found the Board had erroneously construed under the BRI, the Board found that five of the claims at issue were anticipated by prior art, and even went a step further in finding that three claims were obvious where it has originally found them to only be anticipated. This suggests the limitations of claim construction—while it depends on the particulars of the prior art in any case where claim construction is at issue, it is certainly the most strategic option for the patent-challenger to always strive to find a path to invalidation regardless of the claim construction ultimately adopted in the proceeding, whether it be in an IPR or federal district court litigation.
In Straight Path IP Group, the Federal Circuit’s reversal of the Board’s claim construction emphasized the need for claim construction under the BRI to address the “facially clear meaning” of the claim language. The claim language at issue involved interpreting the meaning of “is” in the claim language: “is connected to the computer network[.]” President Bill Clinton’s famous deposition testimony, “it depends what the definition of is is . . .” has often been criticized as a dodge to avoid admitting to an affair with Monica Lewinsky. But the Board and Federal Circuit’s different conclusion of whether “is” implicitly denotes the present tense gives a belated nod to President Clinton’s hedging under oath. In ruling that the Board’s interpretation of “is” could not reasonably disregard the present-tense limitation of “is” by simply requiring the computer to be registered with the server, the Federal Circuit criticized the Board for turning the patent specification to support a claim interpretation at odds with the plain meaning of the claim language itself. In the view of the Federal Circuit and Straight Path IP Group, the “present tense ‘is’ in ‘is connected to the computer network’ plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.”
The Federal Circuit’s opinions in Straight Path IP Group and Proxyconn indicate that even if the Supreme Court upholds the broadest reasonable interpretation standard for claim construction in an IPR, well-established claim construction rules, such as applying the plain meaning of a claim language absent a clear redefinition or disavowal, will continue to be the bright line rules for claim construction. The PTO’s merit brief to U.S. Supreme Court that defends the PTO’s use of the BRI claim construction standard appears to echo this point by explaining that the BRI is “used only to choose among ‘reasonable’ interpretations of disputed claim language i.e., the interpretations that are consistent with the text of the claim and with the specification.”
All told, while In re Cuozzo Speed Technologies may prompt a Supreme Court decision that plumbs the depths of congressional intent and wades into the various policy arguments for assigning a particular claim construction interpretation standard in IPR proceedings, the practical reality of the impact of the claim construction standard assigned may be much ado about nothing —or just the tip of the iceberg in addressing whether (and what) incongruities should exist between an IPR and district court litigation aimed at invalidating a patent.
 Id. at p. 13.
 In re Cuozzo Speed Tech., LLC, 778 F. 3d 1271, 1283 (Fed. Cir. 2015).
 Cuozzo, 778 F. 3d at 1283.
 Cuozzo, 778 F. 3d at 1283.
 Cuozzo, 778 F. 3d at 1283.
 See Case No. 13-453-SLR, Docket No. 277.
 Id. at Docket No. 41.
 Id. at p. 9.
 IPR2014-00310, July 9, 2015, Paper 30 at pp. 6-7.
 Case No. 13-cv-453-SLR, Docket No. 200 at p. 19-20
 IPR2014-00418, August 7, 2015, Paper 28, Final Written Decision at p.7.
 NOTE: confirmed as of 4-04-16.
 General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, 2013 WL 4757516, at *2-3 (D. Del. Sept. 3, 2013).
 See U.S. Patent No. 6,581,065: https://patents.google.com/patent/US6581065B1/en
 General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, 2013 WL 4757516, at *2 (D. Del. Sept. 3, 2013); see e.g., General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, Docket Nos. 35, 40, 42.
 Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, June 26, 2014, Paper No. 56, p. 9.
 Id. at p. 9-10.
 See CBM2014-00054, May 13, 2014, Paper No. 19 at pp. 9-11.
 Kyocera Corp., Motorola Mobility LLC v. Softview, LLC, IPR201300004?
IPR201300257, March 21, 2014, Paper No. 53, p. 5.
 Kyocera, IPR201300004, Paper No. 12, p. 19.
 Proxyconn, 789 F.3d at 1298.
 Id. at 1298.
 Straight Path IP Group, 806 F.3d at 1360.
 Straight Path IP Group, 806 F.3d at 1360.