Oral arguments in the Cuozzo Speed Technologies v. Lee appeal were heard by the U.S. Supreme Court on April 25, 2016. As now widely appreciated and commented on, this is a case that has mainly focused on the claim construction standard of review that the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) has been applying during the inter partes review (IPR) process.
The chief issue on appeal before the Supreme Court important to patent practitioners is whether the USPTO, a federal agency, has the substantive authority to construe patent claims in an IPR proceeding under the broadest reasonable interpretation (BRI) standard rather than the doctrinal “plain and ordinary meaning” standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) (en banc) as applied by Article III courts, and interestingly enough, also by the International Trade Commission (ITC). The ITC, like the USPTO, is a federal agency having jurisdiction over patents in certain circumstances. Specifically, the ITC has statutory authority to investigate the importation of goods that infringe a U.S. patent claim. See 19 U.S.C. § 1337. In fulfilling that mandate, the ITC uses the same “plain and ordinary meaning” claim construction standard as Article III courts by under Phillips for determining patent validity and infringement. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1346 (Fed. Cir. 2008); 35 U.S.C. § 282.
It seems difficult to reconcile the Respondent’s principal argument that two standards should still apply: that is, that the PTAB should be permitted to continue applying its policy-derived broad BRI standard for construing patent claim scope in Congressionally mandated “adjudicative” IPR proceedings while still using the lower preponderance of the evidence standard provided under 35 U.S.C. § 316(e). The notion that the USPTO may “infer” such intent to also apply the BRI in the absence of any express guidance from Congress was weak, at best. Especially because having two such claim construction standards applied by Article III courts and the ITC on the one hand, and the USPTO’s unilateral application of an “examination” claim construction standard in an intended “adjudication” setting on the other hand, has already led to inequitable and presumably non-appealable results.
The extirpative effect of the broadest reasonable interpretation in IPR proceedings can be discerned from the USPTO’s own data: from September 2012 to January 2016, more than 4,000 petitions for institution of IPR proceedings were filed. From reviewing the USPTO’s own data, a total of 792 IPRs reached a final decision and in 685 of those IPRs (or a whopping 86%), the PTAB invalidated some or all of the challenged claims. See PTAB Statistics, January 31, 2016, at pp. 2, 7, 9, U.S. Patent and Trademark Office (last accessed May 2, 2016).
Fortunately, a glimpse of how the Supreme Court may rule in Cuozzo gives some hope that the Court will correct the inequities being wrought by the PTAB’s application of the BRI. This theme was revealed during questioning of the government’s attorney by Chief Justice Roberts, who stated at one point that “it’s a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results.” Cuozzo; Tr. at 32. If that statement sheds some light on Chief Justice Roberts’ mindset as to how he would draft the majority opinion, the decision may depend on how many associate justices can be convinced to join that same line of thinking.
While we do not know the eventual outcome of Cuozzo, let’s take a look at how to adapt in a post-Cuozzo world.
Practitioner Strategies Post-Cuozzo 
- Higher Rate of Continuation Practice: There will likely continue to be a significant number of prior art references construed in any IPR. When taken in view of the perfect storm of limited or non-existent opportunities to amend claims, the application of the BRI (or Phillips standard if the Supreme Court so opines) combined with the loss of appellate jurisdiction of the Federal Circuit (also an issue on appeal in Cuozzo), the PTAB likely will continue to be the apocryphal “patent death squad” and invalidate a significant number of challenged patent claims in an IPR. One strategy to countervail this situation may be to maintain several continuation patent applications having claim scope similar to those claims in the IPR. If the patent claims in the IPR are invalidated, amending one or more of the pending claims in a related continuation application to get issuance of new patent with claims having a narrower scope than the now-invalidated related patent may help neutralize the prior art that was broadly construed in the IPR.
- Take Your IPR Lumps: The PTAB will likely not grant IPR for all claims challenged by a petitioner. For such claims not selected by PTAB to be involved in an IPR, a patent holder may find itself considering filing a patent infringement suit on such patent claims against an accused infringer. No matter whether the Supreme Court in Cuozzo reaffirms the BRI in IPRs or mandates the Phillips standard, suing on those claims not selected for IPR suggests that those patent claims may have been construed as not reading on the submitted prior art before the PTAB, and may well escape similar prior art when and if challenged in a district court or before the ITC.
- Amending Challenged Claims: For the patentee, the ability to amend challenged claims is greatly limited or non-existent in practice in an IPR. However, if an amendment is filed, one must show point-by-point written description support for the proposed claims. One way of doing so is to directly copy the proposed claim language straight from the specification to avoid enlarging the scope of the original claims by adding new matter or when construed under the doctrine of claim differentiation.
- Challenge All Claims: Under 35 U.S.C. § 315(b), an IPR must be filed within one (1) year from the service date of a complaint for patent infringement. To eliminate the risk of a facing a potential patent infringement action after the one-year window for filing an IPR has run, a petitioner may want to consider challenging all of the claims of the patent in the first IPR, as the patentee could elect to assert different claims of the same patent in a second court action if the petitioner waits more than one year after the first infringement action was filed. In such an instance, the petitioner would otherwise be time barred and prevented from challenging in subsequent IPRs.
- Embrace the “Broadest Reasonable Interpretation” Standard: If the Supreme Court reaffirms the PTAB’s use of the “broadest reasonable interpretation” in IPRs, a potential petitioner may want to begin compiling dictionary definitions, prior art references, industry standards, and experts in the filed as to establishing the ordinary state of the art in support of the petition for institution of an IPR. Convincing the PTAB that there is a “reasonable likelihood” of prevailing based on the submitted evidence increases the odds that PTAB will also agree that the challenged claims under BRI read on the newly submitted prior art and that a petitioner is likely to prevail on at least one challenged claim.
- Conduct and Maintain an Extensive Prior Art Library: Compiling an extensive prior art library as a matter of course is an important step to take, preferably as soon as a competitor’s patent application is first published 18 months after filing. The petition for an IPR must convince the PTAB that there is “a reasonable likelihood that the petitioner [will] prevail with respect to at least one 1 of the claims challenged in the petition,” so it is important to have prior art already collected long before it is needed. See 35 U.S.C. § 314(a).
This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.
 Adopted in part from Olson, B.J., “Federal Circuit affirms broad PTAB claim construction standard,” Westlaw Journal of Intellectual Property, Vol. 21, No. 25; April 1, 2015 at 7.