United States: Cuozzo And Dome Patent: Unpacking Claim Construction Standards And Burdens Of Proof In Patentability And Validity Analyses

On January 15, 2016, the U.S. Supreme Court granted certiorari in the patent case Cuozzo Speed Technologies, LLC v. Lee,1 an appeal of the Federal Circuit decision In re Cuozzo Speed Technologies, LLC.2 In the Cuozzo decision, the Federal Circuit decided the first appeal of a Patent Trial and Appeal Board (PTAB) ruling.3 Among the holdings of this case was the determination that the PTAB did not err in construing Cuozzo's claims using the "broadest reasonable interpretation" (BRI) standard. The Supreme Court's grant of certiorari raises the question of whether the Court might disagree with the Federal Circuit and hold that the "plain and ordinary meaning" (POM) standard4 used by district courts in construing patent claims is the standard that should be applied by the PTAB in post-grant challenges under the America Invents Act (AIA).

For patentees, the BRI standard5 can result in a broader interpretation of claims, which renders them more vulnerable to prior art attacks. While BRI is theoretically the standard applied by examiners during prosecution, there is no explicit and affirmative record of how claims are construed by the examiner. How the claims—which are very frequently amended during prosecution—are actually construed is arrived at inferentially through analysis of the prosecution history. In contrast, where claim construction is in dispute in an AIA post-grant proceeding, the PTAB will issue a preliminary claim construction in its determination of whether to institute a trial.6 And district courts issue Markman orders on claim construction.7 The patent prosecutor involved in ex parte prosecution, by contrast, is involved in a dance with the patent examiner that is supposed to follow the rules of BRI. But the "elephant in the room" is the enormous success rate of AIA post-grant challenges, showing that 87% of all inter partes reviews (IPRs) result in some or all of a challenged patent's claims being cancelled. If the examination corps at the U.S. Patent and Trademark Office (USPTO) and the PTAB are each applying the same BRI standard, then this figure seems askew. It is important to note that there are factors other than claim construction in play, such as examiner error in allowing claims or the availability of new and superior prior art.

If the Supreme Court holds that BRI is the appropriate standard, then patent prosecutors can look forward perhaps to a growing body of decisions by the PTAB to help establish claim construction principles for the USPTO examination corps, rendering claim construction less ad hoc and less susceptible to an individual examiner's personal style. If, on the other hand, the Supreme Court holds that the POM standard applies, then the experience of the district courts in applying Markman over the past two decades will help lead the PTAB toward more balanced statistics.

While patent prosecutors should be aware of how their claims will be interpreted by the examiner and the PTAB when drafting them, there is little that can be prepared for aside from writing clear specifications and claims, making clear arguments, and adhering—to the extent possible—to principles of compact prosecution. In fact, as courts and the PTAB are increasingly admitting, there would be very little difference in the construction under either standard.

Another principle that affects PTAB trial statistics is the burden of proof that falls on the petitioner, as compared to the burden falling on a district court litigant alleging invalidity of an issued U.S. patent. The PTAB uses the "preponderance of the evidence" standard to show the unpatentability of a claim, which amounts to just slightly more than half of the evidence. District courts, because a patent is presumed valid,8 require a showing of invalidity by "clear and convincing" evidence, which is a much higher burden. Obviously, the PTAB standard is much easier to meet for petitioners than the clear and convincing standard in trial courts. But questions have arisen in the context of appeals of USPTO (including PTAB) decisions to the Federal Circuit whether challenges of issued patents at the USPTO should require clear and convincing proofs of invalidity.

The recent case of Dome Patent L.P. v. Lee9 is illustrative. The patentee, who received an adverse decision in ex parte reexamination, filed suit against the USPTO in the U.S. District Court for the District of Columbia under 35 U.S.C. §§ 145 and 306, a venue that was available for such challenges at the time.10 The district court upheld the USPTO in rejecting Dome's claims as obvious, and Dome then appealed to the Federal Circuit. Dome argued that the district court erred by not requiring the USPTO to use the clear and convincing standard of proof because the action concerned patent claims already issued by the USPTO. The district court disagreed and the Federal Circuit upheld the district court's decision. At the crux of the holding was the fact that the resumption of validity only attaches to an invalidity defense raised to a charge of infringement. Quoting In re Etter, the court held that "[a]n examiner is not attacking the validity of a patent, but is conducting a subjective examination of claims in the light of prior art."11

The holding in Dome Patent illustrates that the USPTO needs to demonstrate obviousness only by a preponderance of the evidence, rather than by clear and convincing evidence, because USPTO actions do not involve a defense to a charge of infringement necessary to trigger presumption of validity in 35 U.S.C. § 282 and the attendant "clear and convincing evidence" standard for an invalidity defense.

The Supreme Court's decision in Cuozzo will not reach or alter the standard of proof needed to prove invalidity at the USPTO, as exemplified in Dome Patent. Thus, challengers will always find a relative advantage in USPTO proceedings compared to district court litigation. Patent prosecutors can help to build a case toward this standard of proof by providing clear, consistent, and accurate disclosure and arguments during prosecution.

Currently, PTAB challenges enjoy a lower standard of proof and a broader claim construction standard that makes it more attractive to challengers. Perhaps the Supreme Court will level the claim construction playing field in Cuozzo, but no matter what the outcome, patent prosecutors mindful of these concepts can help to shore up a patent against challenges that statistically have greatly favored petitioners.

Footnotes

1 Cuozzo Speed Techs., LLC v. Lee, No. 15-446, cert. granted (U.S. Jan. 15, 2016).

2 No. 2014-1301 (Fed. Cir. July 8, 2015).

3 The Cuozzo IPR petition, Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 1 (PTAB Sept. 16, 2012), was the first IPR petition ever granted by the PTAB under the America Invents Act. See id., Paper 15 at 26-27 (PTAB Jan. 9, 2013).

4 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

5 37 C.F.R. §§ 42.100(b), 42.200(b), 42.300(b) (2012).

6 35 U.S.C. §§ 314(c), 324(d); 37 C.F.R. §§ 42.100(b), 42.200(b), 42.300(b).

7 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

8 35 U.S.C. § 282.

9 No. 2014-1673 (Fed. Cir. Sept. 3, 2015).

10 As an alternative to appeal to the Federal Circuit, reexaminations filed before November 29, 1999 could file suit against the USPTO in the U.S. District Court for the District of Columbia to set aside the USPTO's decision. This provision was removed by the American Inventor's Protection Act of 1999, Pub. L. No. 106-113, 113 Stat. 1501 (1999).

11 Dome Patent, slip op. at 9-10 (quoting In re Etter, 756 F.2d 852, 857-58 (Fed. Cir. 1985)).

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Sep 2018, Seminar, Chicago, United States

Finnegan is a sponsor of the Intellectual Property Owners Association Annual Meeting, supporting the Women in IP Networking Brunch.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

Similar Articles
Relevancy Powered by MondaqAI
Banner & Witcoff
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Banner & Witcoff
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions