Foley Attorneys Discuss Impact of SCOTUS Case on Patent Owners

Partners Stephen Maebius and Eley Thompson commented on U.S. Supreme Court case, Cuozzo Speed Technologies v. Lee, a case that revolves on the claim construction standard that the Patent Trial and Appeal Board (PTAB) applies during the inter partes review (IPR) process.

On April 25, 2016, the day of the oral arguments, Maebius was quoted in World Intellectual Property Review’s article, “Cuozzo at SCOTUS: Day One Arguments and ‘Tectonic Shift’ Calls.” Maebius said there were two issues at stake that could give lift to patent owners, depending on how the court rules. “First, whether a narrower claim construction standard should be applied during America Invents Act proceedings, which would benefit patent owners by making it less likely that their claims are interpreted so as to encompass invalidating prior art. Secondly, whether a patent owner has a right to challenge the PTAB’s institution decision on appeal, which would benefit patent owners by providing a new way to attack IPRs on procedural grounds where the PTAB goes beyond the scope of a petition.”

Thompson, who attended the oral arguments, was quoted in a Law360 article, “Justices Appear Split on AIA Claim Construction Standard,” discussing how the justices reacted to the arguments. He explained that whichever way the justices rule, claim construction will be conducted differently in AIA reviews than either in examination, which uses the broadest reasonable interpretation test, or district court, which does not. Thompson said, “There’s a real tension here. It’s difficult to say which way this is going to come out.”

Thompson continued the discussion in IP Pro Patents’ article, “SCOTUS Justices Question Different Claim Standards.” He said, “On the broadest reasonable interpretation issue, the justices seemed to struggle with the tension between IPRs being consistent with validity determinations in district court litigation, or patentability determinations in USPTO proceedings. Very little time was spent on the reviewability issue. Justice Sonya Sotomayor observed about legal precedent that ‘we don’t easily think that Congress is intending to prevent courts from enforcing its directives to Federal agencies, okay?’”

Both partners were mentioned in a Managing Intellectual Property article, “Reactions and Predictions from Cuozzo Arguments at the Supreme Court,” on May 2, 2016. Thompson and Maebius shared their takeaways from the arguments and said, “While it was unclear how the court will ultimately rule, it was rather clear that the biggest proponent for consistency with the district court proceedings was Chief Justice Roberts and the biggest proponent of the USPTO being able to recall patents under their own broadest reasonable interpretation standard was debatable because several justices seemed to support the notion.”