Cuozzo v. Lee: Implications for Post-Grant Review Following New Supreme Court Ruling

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, July 7, 2016

Recorded event now available

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Program Materials

This CLE webinar will examine the Supreme Court’s decision in the Cuozzo v. Lee case and will discuss the implications of that decision for post-grant proceedings and patent validity.

Description

The Supreme Court handed down its decision in Cuozzo Speed Technologies LLC v. Lee on June 20, 2016, ruling the Patent Office’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims is a “reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office.” The Court was unanimous in its decision as to the BRI standard in an Inter Partes Review (IPR).

Furthermore, the Court addressed whether the PTAB’s institution decision in an IPR is judicially unreviewable on appeal under any circumstances. The majority of the Court, six out of the eight Justices, with Justices Alito and Sotomayor dissenting, upheld the Federal Circuit’s ruling that review of the PTAB’s institution decision is barred, even though such decisions could be considered to be preliminary and discretionary. In so doing, the Court majority stated that it need not, and did not, decide the precise effect of §314(d) on appeals that implicate constitutional questions depending on other, less closely-related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond §314(d).

Listen as our authoritative panel of patent attorneys examines the Cuozzo v. Lee decision and what it means for IPR and other post-grant practice before the PTAB. The panel will also discuss what companies and their counsel need to do to increase their chances of success in AIA post-grant proceedings in light of the Supreme Court’s decision endorsing broadest reasonable claim construction and generally endorsing “no challenge” of the PTAB’s institution decision.

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Outline

  1. Examine cases where differences between broadest reasonable interpretation (BRI) and “plain and ordinary meaning” standard either were or should have been outcome-determinative
  2. Cuozzo v. Lee (U.S. June 20, 2016)
    1. PTAB and Federal Circuit decisions
    2. Supreme Court decision and its reasoning for affirming the PTO’s use of the BRI standard and affirming the prohibition of appeal of the PTAB’s institution decision, as well as the Court’s dissent
  3. What are the consequences now that the Supreme Court affirmed the Federal Circuit’s rulings on claim construction and the immunity of the PTAB’s institution decision
  4. Will the Cuozzo decision in an IPR context be extended to PGR and CBM AIA reviews?
  5. Regarding institution decisions, what effect may §314(d) have on Federal Circuit appeals or PTAB FWDs that implicate constitutional questions, that depend on other less closely-related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond §314(d)
  6. Potential PTAB and prosecution practices in view of the Cuozzo decision
    1. What is the broadest reasonable claim interpretation the patentee wants for a particular claim?
    2. Should the patentee present claimed embodiments that will have different “broadest reasonable interpretations”?
    3. How the might a patentee accomplish the objectives in VI.B through crafting the claims, specification, and/or prosecution history claim drafting, specification drafting, or and support to obtain desired broadest reasonable claim construction(s)

Benefits

The panel will review these and other key issues:

  • The standard of review for patent validity in IPR proceedings before the PTAB
  • The appealability of the Board’s decision whether to institute an IPR proceeding
  • Implications of the Cuozzo decision for post-grant proceedings

Faculty

Erika H. Arner
Erika H. Arner

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish...  |  Read More

Barker, M. Paul
M. Paul Barker

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Barker has a diverse practice, including interferences, post-grant proceedings, patent prosecution, arbitration,...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

James D. Stein
James D. Stein

Finnegan Henderson Farabow Garrett & Dunner

Mr. Stein focuses his practice on post-grant proceedings before the U.S. Patent and Trademark Office, and currently...  |  Read More

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