Eppenauer Discusses Cuozzo Speed Technologies v. Lee and Its Potential Impacts on Inter Partes Review

Shook, Hardy & Bacon Seattle Managing Partner Bart Eppenauer examines the implications of Cuozzo Speed Technologies v. Lee for the inter partes review (IPR) system in an April 24 IP Watchdog article, “Cuozzo at the Supreme Court – Determining the Future Value of Inter Partes Reviews at the Patent Office.”

Highlighting the significance of IPR as the preferred method for challenging the validity of a patent, Eppenauer states, “[I]t is imperative that IPRs are consistent, fair and reliable to ensure that these proceedings fulfill Congress’ objective of providing a surrogate for district court litigation in a court-like proceeding.”

Eppenauer outlines the two most compelling issues at stake. First, Eppenauer explains, the Supreme Court will decide “whether the Federal Circuit erred in holding that, in IPR proceedings, the PTAB (Patent Trial and Appeal Board) may construe claims in an issued patent according to their ‘broadest reasonable interpretation’ (BRI) rather than their plain and ordinary meaning ….” Second, Eppenauer notes that the court will consider “whether the Federal Circuit correctly held that the Director’s decision to institute an IPR is unreviewable, even after a final written decision.”

Eppenauer observes many support Cuozzo’s stance; “[A]n amicus brief filed by 15 prominent companies spanning industries (3M, Bristol-Myers Squibb, et al.) in support of Petitioner argues that the BRI standard is inconsistent with the language of the AIA (American Invents Act) and its legislative history.” However, other amicus briefs support the government, arguing that Congress created IPRs to “facilitate the elimination of weak patents and to be an extension of the PTO examination process.”

Eppenauer anticipates that “the Court will agree in large part with Cuozzo and the overwhelming support of the many amici in the case that have set out significant problems and negative long-term consequences to the patent system if the PTO’s current approach of using BRI in IPRs is not altered.” He continues: “I also believe the Court will reign in the PTO with regard to its position on reviewability of the PTAB’s institution decisions.”