The Cuozzo Conundrum: Prosecution History Estoppel Remains An Open Issue

On June 20, 2016, the Supreme Court issued its decision in Cuozzo Speed Technologies, LLC v. Lee. One of the questions presented to the Court was the appropriate claim construction standard for inter partes review (IPR). The fundamental dispute, as framed by the Court, was the apparent intent of the Leahy-Smith America Invents Act (AIA) and the express rule-making authority it granted. Pursuant to the rule-making authority granted by the AIA, the Patent Office set forth the broadest reasonable interpretation (BRI) as the standard for construing claims under an IPR. This is the standard used during original examination of an application for a patent. The patent-owner argued that, since IPRs were intended to be an alternative to litigating validity in the courts, it should be subject to the same standard of claim construction used there, which is generally understood to be narrower. Ultimately, the Court held that the rule-making authority trumped any arguments about intent and consequences and affirmed the Patent Office’s application of the BRI standard.

However, one aspect of the Court’s decision that stands out is its response to the patent-owner’s argument about the asymmetry between the original examination procedure and IPRs, with respect to amendments. As the patent-owner argued, though BRI is applied in examination of patent applications, applicants may amend claims during prosecution as a matter of right. In contrast, the patent-owner argued that the right to amend in IPRs was practically speaking non-existent. The Court’s response was that statistical anomalies do not reflect a necessary or inherent defect that would merit overturning the Patent Office’s authority.

But there is another asymmetry that may have been overlooked – prosecution history estoppel, including prosecution disclaimers. Part of the BRI-amendment deal in prosecution is that an applicant is held to amendments and arguments that it makes to overcome prior art. That is, if an applicant amends the claims or distinguishes by argument to overcome prior art in light of BRI, then he or she relinquishes that claim scope.

For example, suppose an applicant claims a device comprised of two parts “bolted” together. Under BRI, bolted may mean any manner of fastening with a bolt. During prosecution, if the examiner raises a reference that disclosed bolting, but the applicant argues that his or her invention features permanent bolting (or amends by adding “permanently” to bolted) and the reference does not disclose permanent bolting, then the applicant is deemed to have relinquished that claim scope. The patent claim is thereby construed only to cover permanent bolting and neither broadening construction nor the doctrine of equivalents may recapture scope. Notably, this relinquishment of claim scope becomes part of the record – public record. It also reflects the legal scope of the claim under the BRI standard.

Normally, in a court case, prosecution history estoppel or disclaimer is used by an accused infringer to narrow the claim scope to avoid infringement. The irony is that, in an IPR, it is to that same accused infringer’s interest to seek as broad a scope as possible to bring in as much prior art as possible to invalidate the claim. On the flip side, it is the patent-owner who will seek to narrow the claim scope. If PTAB is applying the same standard from prosecution, then arguably the patent-owner should be able to conversely use the prosecution history to disclaim scope.

But the PTAB’s application of BRI in IPRs ignores the prosecution history. We are unaware of any case in which a patent-owner successfully argued that the scope of a claim was limited by the prosecution history. Indeed, PTAB seems to have made quite clear that it is not bound by the prosecution history at all. As a result, if the above illustrated patent claim were subject to IPR, the PTAB’s BRI of “bolted” would return the claim scope to covering what the applicant already acknowledged as prior art and had relinquished.

This would seem to be a major hole in the Court’s analysis of the BRI standard because IPRs do not provide the same symmetry offered in prosecution. In particular, the inconsistency would seem to create a fundamental unfairness because accused infringers would have the benefit of ignoring prosecution history in IPRs, but if the claims survive, they may assert the prosecution history to argue against infringement in court. If BRI is to be applied by PTAB, in a manner consistent with both the Patent Office’s arguments and the Court’s analysis, then it should be applied consistently in view of the prosecution history. PTAB should not have the discretion to ignore disclaimers in the prosecution history.