Supreme Court accepts first IPR appeal–will the BRI standard survive?

On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed Techs. v. Lee. The questions presented are:

  • Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  • Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The first question has divided the Federal Circuit. In July 2015, the Federal Circuit denied rehearing en banc on this question by a narrow margin (6-5). In dissent, Chief Judge Prost (joined by four other judges) argued that in adjudicatory proceedings involving issued patents, claims should be given their actual meaning as set out in Phillips.

The second question is one of statutory interpretation. Section 314(d) states that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The Federal Circuit has held that this means institution decisions are never appealable, even after the issuance of a final written decision (which is appealable).  In this case, the Board instituted IPR on two claims on grounds that were not presented in the petition, arguably in conflict with Section 312’s requirement that the petition identify “the grounds on which the challenge to each claim is based.”

Strategy tip:  The current Court has not been shy about altering patent law. Many are betting that will be the case this time as well. To avoid getting caught in pre-Cuozzo BRI limbo, consider proposing constructions in IPRs that are supportable under either the BRI or Phillips standard (plain and ordinary meaning).

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