By Scott A. McKeown
| April 27, 2016
Attached (here) is a transcript from Monday's argument.  

My view is that the a majority of the Court was not buying Cuozzo's key BRI arguments. Namely, his iterative amendment argument, and his adjudicative distinction. Most of the questions for the government seemed informational (on parallel tracks a patent dispute may take (Roberts)), as opposed to the disputed issues. While issues of policy are always part of a SCOTUS appeal, I don't see them moving the needle here absent something more.  It was the "more" that will be the problem for Cuozzo..

Some notable exchanges:

Questions to To Cuozzo point out that amendment is possible in IPR, one opportunity should be enough, and policy reasons support BRI . 
JUSTICE SOTOMAYOR: I might be moved by your argument if Congress had not given any right for the Board to amend, because that would be consistent with practices in the district court, where district court can't amend under any circumstance. But basically, Congress here said you can amend once. I'm not sure that that supports your proposition.  
                                                     .          .          .          .
JUSTICE ALITO: Do the Board's institution decisions always set out what it understands the broadest reasonable interpretation to be? And and if they do, is it must the Board stick with that throughout the proceeding? And in that if that is true, why does the patentholder need more than one opportunity to amend?
                                                      .          .          .          .
JUSTICE KENNEDY: Well, if if the if the patent is invalid under its broadest, reasonable interpretation, doesn't doesn't that mean the PTO should never have issued the patent in the first place, and doesn't that give very significant meaning and structure to this process?
As other have pointed out, Justice Beyer tipped his hand with his reference to patent trolls. Justice Ginsburg also seemed to favor the gov't position.

On Cuozzo's examinational vs. the adjudicative distinction the Court did not seem persuaded given other significant differences with IPR and the district courts:
JUSTICE ALITO: Is the standard is the standard of proof for invalidity the same in an infringement action in district court as it is in interpartes review?
On whether or not there is really a difference between BRI and Phillips, Justice Sotomayor commented on the same Philipps tools being at work in BRI:
JUSTICE SOTOMAYOR: Aren't those tools used in determining the broadest the broadest reasonable reading, meaning how can the PTO decide what a broad reasonable reading is unless it looks at all of those factors and decides that the specifications and all the other things don't cure, continue to provide ambiguity in the patent?
The Gov't echoed these same points:
MR. GANNON: Well, I do think that it is the case that in most circumstances, these two different forms of construction are going to end up in the same place.  .   .    .
While difficult to predict an outcome based upon oral argument questioning, the gov't was not challenged in any significant regard on key isues. On the other hand, Cuozzo's key arguments seemed to fall flat.  I don't expect that BRI will be disturbed.



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By Scott A. McKeown
| April 26, 2016

BoardSide Chat Tuesday April 26th

Today the USPTO's Patent Trial & Appeal Board (PTAB) will host a second April Boardside Chat webinar to address the new AIA trial rules.  The final rule package, goes into effect next week (May 2nd). The free webinar will be hosted by Lead Administrative Patent Judge (APJ) Mike Tierney.  The webinar will include a Q&A portion for submitted questions.

Webinar access information is provided below.

Event:

PTAB Boardside Chat Webinar

Event address for attendees:

https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e792aa46e57a99d03d7945c393232401e (link is external)

Date and time:

Tuesday, April 26, 2016 Noon
Eastern Daylight Time (New York, GMT-05:00)

Duration:

1 hour

Event number:

994 178 459

Event password:

123456

Audio conference:

Call-in toll number (US/Canada)

1-650-479-3208

Access code: 994 178 459

Captions Link:  

http://www.captionedtext.com/client/embed.aspx?EventID=2839522


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By Scott A. McKeown
| April 25, 2016

High Court to Consider Patent Trial & Appeal Board (PTAB) Procedures

At 1PM today, the Supreme Court of the United States will hear arguments in Cuozzo Speed v. Lee.  As previously discussed, in its petition for certiorari  Cuozzo presents two issues for review:

1.     Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2.     Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Cuozzo argues on question (1) that since Inter Partes Review (IPR) is "adjudicative" and not "examinational" that use of the broadest reasonable interpretation (BRI) is improper. In its Reply Brief of April 15th, (here), Cuozzo has doubled-down on this argument despite the fact that The USPTO has employed BRI in patent interference (adjudicative proceeding) for decades.  As done in its opening brief, Cuozzo again attempts to downplay the patent interference inconsistency in a footnote.

My prediction is that BRI is left undisturbed.  Whether by virtue of the rule making authority conveyed to the USPTO in the America Invent's Act (AIA), or policy grounds (ability to amend), its hard to imagine a different outcome. Especially given the fact that both BRI and Philipps frameworks employ "plain meaning" in any event. (see the colorful debate on IPWatchdog.com on this topic).

As to Question (2), the outcome here is anyone's guess.  While I tend to agree with Judge Newman that the statute makes more sense from an interlocutory perspective, it will be hard for the Court to stray from the clear terms of the statute.  Cuozzo argues the other side of  "plain meaning" here.

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By Scott A. McKeown
| April 12, 2016

Reminder: April Webinar Tomorrow (New PTAB Rule Strategies, Insights & Outlook)

The April edition of the PatentsPostGrant.com free webinar series will be held tomorrow, April 13th @12:00PM (est). The April webinar is entitled: New PTAB Rules: Strategy, Insights and Outlook of Things to Come (speakers: Scott McKeown & Greg Gardella). As the title suggests, the webinar will focus on the application of the new rules, with a focus on strategies and tactics.  We will also address the impact of recent CAFC decisions and possible Cuozzo outcomes. Register (HERE).  (or copy the following link into your web browser: https://oblon.webex.com/oblon/onstage/g.php?MTID=e92802ce727e1c70e6cd33cfaf056c72e)

Topics include
-Patentee Strategies & Declaration Evidence Under the New Rules
-New Petition Strategies
-Cuozzo Outlook 
-CAFC  Update
 
The formal portion of the webinar will begin at 12:00 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you'll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.



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By Scott A. McKeown
| April 8, 2016

April Webinar Examines New PTAB Rule Strategies, Insights & Outlook

The April edition of the PatentsPostGrant.com free webinar series will be held this Wednesday April 13th @12:00PM (est). The April webinar is entitled: New PTAB Rules: Strategy, Insights and Outlook of Things to Come (speakers: Scott McKeown & Greg Gardella). As the title suggests, the webinar will focus on the application of the new rules, with a focus on strategies and tactics.  We will also address the impact of recent CAFC decisions and possible Cuozzo outcomes. Register (HERE).  (or copy the following link into your web browser: https://oblon.webex.com/oblon/onstage/g.php?MTID=e92802ce727e1c70e6cd33cfaf056c72e)

The formal portion of the webinar will begin at 12:00 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you'll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.

In addition to this one hour webinar series, May 2016 brings Managing intellectual Property Magazine's ful day PTAB program  entitled: PTAB Forum 2016.  This event will be held in New York City on May 12th, participants include Acting Chief Judge of the USPTO Patent Trial & Appeal Board, Nathan Kelley, as well as two deputy chief judges.  Register (here)

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