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Federal Circuit Says It Won't Tighten PTAB Rules

July 08, 2015

Patent partner Stuart Meyer was quoted by The Recorder in an article about the controversy over changing the standard of claim construction at the Patent Trial and Appeal Board (PTAB).

Patent owners are dissatisfied with the PTAB’s use of the U.S. Patent and Trademark Office's (USPTO) broadest reasonable interpretation (BRI) as the standard of claim construction. They maintain that the BRI causes an overwhelming number of patents to be declared invalid, The Recorder said.

Judges in the U.S. Court of Appeals for the Federal Circuit, including Chief Judge Sharon Prost, believe that the PTAB should abandon the BRI and use the same standard of claim construction as district courts.

However, the current judicial decision leaves the responsibility for removing the BRI with Congress. "If the standard is to be changed, that is a matter for Congress. There are pending bills which would do just that," Judge Timothy Dyk wrote in an opinion in In re Cuozzo Speed Technologies quoted by The Recorder.

Meyer told The Recorder that Cuozzo reveals the PTAB’s struggle to determine the limits of its authority and the still-new America Invents Act (AIA) procedures. Meyer has written extensively on the AIA and often appears before the PTAB.

The AIA created new post-grant review procedures and did not establish an explicit claim-construction standard. The USPTO claims that the act gives the office responsibility to determine post-grant review process rules and also advocate for the traditional BRI approach.

However, Prost argued that the AIA proceedings hold more similarity to court proceedings and thus demand the claim-construction standard the courts use, according to The Recorder. The BRI is inappropriate in this context, Prost said.

Meyer told The Recorder that the issues surrounding Cuozzo and the debate over the PTAB standard will persist. “We are going to see in the next couple of years a decent amount of Federal Circuit litigation" as a result of the debate, he told The Recorder.

The full article can be accessed through The Recorder. (Subscription required.)​​​​​​​​​