Cuozzo v Lee: SCOTUS ‘bothered’ by differing claim constructions, lawyers say

US Supreme Court justices are “clearly bothered” by the fact that courts and the US Patent and Trademark Office (USPTO) reach different results depending on the standard of claim construction used, lawyers have told WIPR.

Yesterday, April 25, the court heard oral arguments in Cuozzo Speed Technologies v Lee, a case that centres on the claim construction standard that the USPTO’s Patent Trial and Appeal Board (PTAB) applies during the inter partes review (IPR) process.

The dispute started in 2012 after Cuozzo’s rival Garmin challenged the validity of Cuozzo’s patent, US number 6,778,074, which covers technology used in a speedometer, by requesting an IPR at the PTAB.

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

But Cuozzo argued that its patent would have been held valid under the Phillips standard, which is used by US district courts.

Earlier this year, the US Court of Appeals for the Federal Circuit rejected Cuozzo’s challenge against the PTAB’s ruling and, five months later, a divided federal circuit rejected a request for an en banc hearing.

Cuozzo then petitioned the US Supreme Court, which agreed to hear the case earlier this year.

Brad Olson, partner at law firm Barnes & Thornburg, told WIPR that Cuozzo began its arguments by questioning two of the justices, Ginsburg and Sotomayor, about whether the PTAB is applying the proper standard.

Olson added that Chief Justice Roberts said that pitting the courts against the USPTO is a “very extraordinary animal” in the legal culture and that two different proceedings addressing the same question can lead to different results.

“The opinion of the court may well hinge on whether Roberts can convince a sufficient number of associate justices to sign on to a majority opinion that holds that the BRI standard is leading to two separate pathways to different results and significant unintended consequences,” Olson said.

Naveen Modi, partner at law firm Paul Hastings, agreed.

He told WIPR that “Some of the justices were clearly bothered by the fact that the district courts and the PTAB could arrive at different results depending on the standard used.”

He added that the justices had inquired why, if IPRs were intended to cut down on litigation, they do not use the same standard as courts.

Marc Cooperman, principal shareholder at Banner & Witcoff, said the justices were “very engaged and active” in exploring the principal question of possible differing claim constructions.

“The justices took a keen interest in the BRI v ordinary meaning issue. Both counsel for Cuozzo and the USPTO were the subject of substantial scrutiny by the court, with the latter getting the lion’s share of the questions,” Cooperman said.

He added: “If the BRI standard is abandoned—which seems likely based on the court’s questioning—more patents should withstand IPR review and the number of IPR proceedings may decline as a result.”

A decision is expected in June this year.