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8 October 2015Patents

Cuozzo seeks US Supreme Court’s help in PTAB BRI case

The US Supreme Court has been asked to clarify whether the Patent Trial and Appeal Board (PTAB) is incorrectly applying the broadest reasonable interpretation (BRI) standard when construing patent claims that are challenged by third parties.

Cuozzo Speed Technologies filed a writ of certiorari yesterday, October 6, requesting that the Supreme Court review the PTAB’s decision to invalidate a patent it owns covering technology used in a speedometer.

In July, the US Court of Appeals for the Federal Circuit ruled 6-5 not to review the dispute en banc, upholding a February decision that said the PTAB was correct to invalidate the patent.

The dispute started in 2012 after rival Garmin challenged the validity of the patent, US number 6,778,074, by requesting an inter partes review at the PTAB.

After construing the claims asserted in the patent under its BRI standard, the PTAB invalidated it in 2013 on the grounds that it was obvious.

Cuozzo appealed against the decision arguing that the PTAB should apply the same standards as US district courts when construing the patent claims, often referred to as the Phillips standard.

The federal circuit, however, rejected this argument.

Judge Timothy Dyk said in the July ruling that there was no evidence that Congress had intended to change the claim construction standards applied by the US Patent and Trademark Office (USPTO) when it passed the America Invents Act (AIA).

In assessing patent applications, the USPTO also uses the BRI standard to determine eligibility.

In its writ, Cuozzo argued that the high rate of patents invalidated by the PTAB is a concern for patent owners and this is down to the application of the BRI standard.

Around 84% of the patents that reach the final written stage of an IPR are invalidated.

Cuozzo said: “Although IPR was expressly designed to be a surrogate for litigation, the PTAB does not use the same claim construction standard as federal courts.

“Rather than construe the claim in an issued patent according to its plain and ordinary meaning, as a federal court would be required to do, the PTAB gives the claim its BRI.

“Of course, 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 the light of prior art,” Cuozzo argued.

Jeffrey Wall, special counsel at law firm Sullivan & Cromwell and representing Cuozzo, told WIPR that the federal circuit's “deeply divided opinion” has made it easier to challenge patents before the USPTO than in courts.

“The validity of an issued patent should not depend on the venue in which it is challenged. Given the deep division in the federal circuit, the Supreme Court's guidance is sorely needed on this issue critical to our patent system,” he added.

But Neil Smith, partner at law firm Rimon, said he thinks the Supreme Court will be unlikely to take on the case.

“When I was a judge on the PTAB and doing ex parte appeals from denials of patent applications, the difference in standards made sense, because there was clearly a right to amend the claims of the patent application.

“In the post-grant reviews there is still a limited chance for amendment, although perhaps this should be greater. However with the opportunity for amendment, the difference in the standards has a reasonable basis,” he added.

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More on this story

Patents
9 July 2015   A US appeals court has declined to review en banc whether the Patent Trial and Appeal Board should continue to apply the broadest reasonable interpretation standard when construing patent claims.
Patents
18 January 2016   The US Supreme Court has agreed to hear a challenge centring on the claim construction standard that the Patent Trial and Appeal Board applies during the inter partes review process, following complaints too many patents are invalidated.
Patents
25 April 2016   The US Supreme Court will hear oral arguments today in Cuozzo Speed Technologies v Lee, a case that centres on the claim construction standard that the Patent Trial and Appeal Board applies during the inter partes review process.