Our Latest Industry Insights

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.

Supreme Court Modifies Claim Construction Review Standard

On Tuesday, the U.S. Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. partially modifying the standard of review to be applied by the Federal Circuit when reviewing a district court’s construction of a claim term. Prior to Teva, the Federal Circuit applied a de novo standard for claim construction review. Now, based on the Teva decision, the Federal Circuit must apply a “clear error” standard for factual questions, and a de novo standard for legal questions when reviewing a claim construction on appeal.