Posts Tagged: "Phillips standard"

The Supreme Court will hear oral arguments in the Cuozzo Speed Technologies, LLC v. Lee on April 25, 2016, with a decision expected sometime before the end of June… [S]ome of the Federal Circuit judges have shown signs that their position on these questions are not as rigid as previously thought. This is not unprecedented – for example, when the Supreme Court was on the verge of considering the patent fee-shifting statute of 35 U.S.C. § 285 in the Octane Fitness case, Judge Rader was seen criticizing the Federal Circuit’s established test in a concurrence to the Kilopass Tech. Inc. v. Sidense Corp. case. The current Federal Circuit may also be recognizing that the present understanding of PTAB jurisprudence may be soon changing.

If you get a patent that won’t make anyone any money, including yourself, the government seems perfectly willing to presume that your worthless patent is valid. However, if you get a commercially valuable patent covering an invention that becomes ubiquitous, the government will not presume your patent to be valid. What exactly was the point of the long, costly and arduous patent examination in the first place if the PTAB simply refuses to apply the presumption of validity? What good is an examination process that ends with a patent that isn’t presumed valid by the agency that granted it in the first place? If the Patent Office refuses to presume the work product of patent examiners is solid why should anyone else? What an incredible waste of time and money.

The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee was using. The Court noted that just because “around” has several dictionary definitions does not mean all these meanings were reasonable in light of the specification. The Court argued that all of the components of the cable connectors encircled an inner electrical conductor, and thus it would seem odd to construe “reside around” without recognizing the context of its use in terms of the cable.

The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances. Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.

Recently the United States Supreme Court added an important IPR case to its docket. Normally the Supreme Court does not take a Federal Circuit appeal to compliment the Court on how well they have resolved a particular matter, so it seems safe to bet that the Federal Circuit will be reversed on one or both of the issues take. At the very least the Supreme Court can be expected to make broad statements of law and principle and remand the case for further consideration. In either event the outcome would be welcomed by patent owners. In the meantime as we wait for a decision it will also be interesting to watch and see if the PTAB begins to moderate and whether the Federal Circuit shifts their jurisprudence, as they have been known to do from time to time while awaiting a decision from the Supreme Court.

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.

USPTO proposed rule changes would amend the existing rules relating to trial practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM), and derivation proceedings. By in large, the Office decided to stick with BRI, but not when the challenged patent will soon expire. The USPTO also adopted the comments from those who expressed satisfaction with the Board’s current rules and practices for motions to amend, which means there will be a right to file a motion to amend but no right to amend if these proposed rules go final.