Eppenauer, Harmon and Murray File Amicus Briefs to U.S. Supreme Court in IPR Authority Dispute

Shook, Hardy & Bacon Partners Bart Eppenauer, Bill Harmon and Lynn Murray filed an amicus brief urging the U.S. Supreme Court to consider Cuozzo Speed Techs. v. Lee, a case examining whether the director of the U.S. Patent and Trademark Office (USPTO) has the authority to set the standard for claim construction in inter partes review (IPR) proceedings. Filed on behalf of the Intellectual Property Owners Association (IPO) without support to either party, the brief argues that the Supreme Court should consider “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."

The U.S. Court of Appeals for the Federal Circuit held that the director of the USPTO can set the standards by which IPR proceedings are held. “The panel majority based its reasoning in large part on the USPTO’s tradition of applying the broadest reasonable interpretation standard in examination and reexamination proceedings,” the brief explains, arguing that “this result is not authorized by the [American Invents Act].”

Inter partes reviews have made the Patent Trial and Appeal Board (PTAB) a fast growing forum for adjudicating patent validity. The PTAB’s use of the broadest reasonable interpretation standard in place of the judiciary’s long-standing plain and ordinary meaning standard means that the same patent can have two different sets of boundaries in parallel proceedings adjudicating validity, namely proceedings before the PTAB and a district court,” the brief argues. “This result is illogical and casts a shadow of uncertainty over the value of research and development and patent portfolios resulting from that research and development, because investors cannot reliably predict the extent of their property rights.”

The Supreme Court granted certiorari, and Shook Partner Rachael Smith joined Eppenauer, Harmon and Murray in filing a second amicus brief on behalf of the IPO. The brief aligns with Cuozzo's position, advocating that the Supreme Court require the PTAB to follow the standards prescribed to district courts, which is to construe claims by giving them their “plain and ordinary meaning.” A Law360 article covered the IPO's brief and the issue.