27Sep 2016

Silvia Salvadori - Patent Ruling: Broadest Reasonable Interpretation{1:30 minutes to read} In the case of Cuozzo Speed Technologies vs Lee, decided on June 20, 2016, the Supreme Court unanimously approved the United States Patent and Trademark Office’s (USPTO) decision to use the “broadest reasonable interpretation” (BRI) as a standard for claim construction in Inter Partes Review Proceedings (IPR). The Court also held that the decision whether to institute an IPR is not subject to a judicial review.  

Cuozzo had argued that the IPR proceedings were like trials and that, therefore, the claim construction should have followed the same, narrowed, standard of “plain and ordinary meaning” used by the courts during litigation. But the Court disagreed. The Court found that the post-grant proceedings at the USPTO are less like judicial proceedings and more like a specialized agency proceedings.

So what now? After this ruling, my advice is that any patentee should strongly consider submitting strong preliminary responses to IPR petitions. I recommend this because decisions to institute the proceedings will very likely not be appealable, and the challengers will have less burden to prove unpatentability of the claims under the BRI standard.

Please contact me with questions or comments at silvia@salvadorilaw.com.
Silvia Salvadori, PhD
Silvia Salvadori, PhD
www.salvadorilaw.com
www.salvadorilaw.com/blog silvia@salvadorilaw.com (212) 897-1938