Supreme Court Agrees to Take Two IP Cases in 2016

On January 15, the U.S. Supreme Court granted certiorari in an administrative patent review case of Cuozzo Speed Technologies, LLC v. Lee, U.S. No. 15-446 (cert. granted January 15, 2016), pertaining to claim construction standards and a case addressing the appropriate standard in awarding attorneys’ fees to a prevailing party under Section 505 of the Copyright Act, John Wiley & Sons Inc. v. Kirtsaeng, No. 15-375 (cert. granted January 15, 2016). Both cases are discussed below:

Cuozzo Speed Technologies, LLC v. Lee

The questions to be addressed are: (1) whether or not the Court of Appeals erred in holding that in inter partes review (IPR) proceedings the Patent Trial and Appeal Board (PTAB) may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) even if the Board exceeds its statutory authority in instituting an IPR proceeding, is the Board’s decision to institute an IPR proceeding judicially unreviewable.

In Cuozzo, the Federal Circuit panel decision held that 35 U.S.C. 314(d) bars it from reviewing a PTAB decision to institute an IPR, even if the issue is raised in an appeal of a PTAB final decision, meaning that institutional decision is insulated from judicial review.

The 2-1 decision (Judge Dyk for the Court, joined by Judge Clevenger, Judge Newman dissenting) also approved of the PTAB’s use of the “broadest reasonable interpretation” (BRI) standard for claim construction, and agreed that the three claims in suit were invalid for obviousness, meaning that the standard for claim construction is different at the PTAB Level from that of a federal district court. The courts use the “ordinary meaning” of the claim terms.

John Wiley & Sons Inc. v. Kirtsaeng

Challenging a decision on awarding attorneys fees in a copyright case,, Petitioner Kirtsaeng urged the Supreme Court to determine which of the four different standards currently employed by district courts should be the prevailing standard for awarding attorneys’ fees: (1) whether the prevailing party’s successful claim or defense advanced the purposes of the Copyright Act (9th and 11th Circuits); (2) a presumption in favor of attorneys’ fees for a prevailing party (5th and 7th Circuits); (3) the four “non-exclusive factors” listed in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (3rd, 4th, and 6th Circuits); and (4) the 2nd Circuit’s placement of “substantial weight” on the objective reasonableness of the losing party’s claim.

The case at hand involved a college student’s appeal seeking to win attorneys’ fees after defeating claims he imported and illegally sold foreign edition textbooks online via the auction site eBay.  In 2013, the case reached the Supreme Court and was a case which clarified that under the Copyright Act’s first-sale doctrine, which states that once a copy is sold the first time it is out of the copyright owner’s control, applies to goods made anywhere.

As a result of the ruling, Kirtsaeng avoided paying $600,000 in damages to Wiley that a federal jury previously said he had to pay for willfully infringing the company’s copyrights. Kirtsaeng, however, subsequently lost his bid to obtain attorneys’ fees from Wiley, leading up this this case.