Supreme Court Hears Oral Arguments Regarding Inter Partes Review’s Claim Construction Standard and Appealability

Takeaway: A reversal by the Supreme Court will have a dramatic impact on inter partes review (IPR) proceedings: if Cuozzo wins on the claim construction standard to be the plain and ordinary meaning standard, the number of future IPR proceedings may decline, but if Cuozzo wins on appealability, the number of appeals to the Federal Circuit from the PTAB  will increase.

The Supreme Court recently heard oral arguments for Cuozzo Speed Technologies v. Lee, a case that addressed the issue of claim construction standard that the Patent Trial and Appeal Board (PTAB) should apply during the inter partes review (IPR) process.

The case involves a speed-limit indicator patent owned by Cuozzo Speed Technologies LLC, which had sued companies including Garmin Ltd., General Motors Co., and TomTom NV for patent infringement and Garmin successfully argued that the Cuozzo patent was invalid as obvious in light of prior art.

Regarding the issue of claim construction standard, Cuozzo argued that IPRs were created by Congress to essentially be a substitute or surrogate for district court litigations, and, therefore, the PTAB should use the same standard as the district courts, i.e., the plain and ordinary meaning standard rather than the broadest reasonable interpretation (BRI).

The United States Patent and Trademark Office (USPTO) argued that it has long applied the broadest reasonable interpretation (BRI) in all agency proceedings and that IPRs were not intended to simply replicate the results of hypothetical district-court litigation.

At one point, Justice Roberts asked: “So if the district court interprets the patent, is that binding on the PTO?” Gannon replied: “No.” So we are left with decisions by the PTAB that are not binding on the district court and decisions by the district court not binding on the PTAB, which led the Chief Justice to say: “I’m sorry. It just seems to me that that’s a bizarre way to conduct legal – decide a legal question.”

Regarding the issue of appealability, both counsels only briefly addressed this secondary issue. Justice Ginsburg was the one who asked questions, and seemed to be worried that if the reviewing court can only review final judgments, then the “statute is doing no work, because there would be a bar on interlocutory review under the final judgment rule.”