Message: Fed. Circ. Judge Foresees PTAB Win In High Court Case (Full)
Fed. Circ. Judge Foresees PTAB Win In High Court Case
Law360, Washington (June 15, 2016, 6:50 PM ET) -- Predicting the outcome of a pending case before the Supreme Court, Federal Circuit Judge S. Jay Plager said Wednesday that the “smart money” is on the Patent Trial and Appeal Board maintaining its standard for reading patent claims, although the senior jurist admitted the standard rarely makes a difference in cases anyway.
Judge Plager didn’t go into detail on why he believed the court would uphold PTAB’s “broadest reasonable interpretation” test for construing patent claims when it decides a case known as Cuozzo, but he did say he did “not think this is as big a drama as it appears to have developed since [the Supreme Court granted that case.]”
Speaking at the PTAB Bar & Bench conference at the U.S. Patent and Trademark Office in Northern Virginia, the senior judge explained that he had never come across a case in which a PTAB panel admitted a patent review under the America Invents Act would have had a different result under a district court’s purportedly narrower claim construction.
“Bottom line, 90 percent, 99 percent of the time, it doesn’t matter,” he said.
Nevertheless, Plager suggested that he gives administrative deference to the PTAB to rule on claim construction issues, as long as the board’s construction is a “reasonable” one. The judge knocked his colleagues on the panel that like to evaluate the claim construction issues for themselves, without giving weight to the board’s ruling.
“We like to review things without deference because that makes us king,” he said.
The panel, which also featured Delaware federal district judge Gregory Sleet and PTAB Chief Judge David Ruschke, also discussed the USPTO’s adamant position that decisions to institute review on a patent cannot be appealed.
Ruschke shrugged off claims that the PTAB’s standard of delegating the same three-judge panel that hands down the institution decision –– which asks the board to determine whether there is a likelihood that the challenged patent claims are invalid –– and the final written decision creates a “bias” in favor of petitioners. Ruschke explained that the nature of the inter partes review system, where petitioners bring forward prior art that is first used as the grounds for institution and, ultimately, the final written decision on validity, lends itself to overlap between the two rulings.
“If there is overlap,” he said, “I don’t find that surprising.”
Judge Plager acknowledged that there is complete agreement that, under the America Invents Act, parties cannot appeal an institution decision “as a preliminary matter.”
Where there is less accord, according to Plager, is on the question of whether the Federal Circuit can examine jurisdictional questions following a final written decision. Plager suggested he takes the affirmative view, considering “you can’t have agencies exercising authority that Congress has not granted to them.”
Plager cited a Federal Circuit decision known as Versata, where it ruled on the types of patents that can be examined under a covered business method review. That case has been appealed to the Supreme Court, although the justices have yet to grant cert.
Cuozzo presents the question of the appealability of institution decisions, but Plager, again speculating on the case’s outcome, said he didn’t think the justices will reach that issue.
“My guess is they’re going to focus on the standard of review for construction, not on this issue, but, you never know,” he said.
--Editing by Jill Coffey.
Judge Plager didn’t go into detail on why he believed the court would uphold PTAB’s “broadest reasonable interpretation” test for construing patent claims when it decides a case known as Cuozzo, but he did say he did “not think this is as big a drama as it appears to have developed since [the Supreme Court granted that case.]”
Speaking at the PTAB Bar & Bench conference at the U.S. Patent and Trademark Office in Northern Virginia, the senior judge explained that he had never come across a case in which a PTAB panel admitted a patent review under the America Invents Act would have had a different result under a district court’s purportedly narrower claim construction.
“Bottom line, 90 percent, 99 percent of the time, it doesn’t matter,” he said.
Nevertheless, Plager suggested that he gives administrative deference to the PTAB to rule on claim construction issues, as long as the board’s construction is a “reasonable” one. The judge knocked his colleagues on the panel that like to evaluate the claim construction issues for themselves, without giving weight to the board’s ruling.
“We like to review things without deference because that makes us king,” he said.
The panel, which also featured Delaware federal district judge Gregory Sleet and PTAB Chief Judge David Ruschke, also discussed the USPTO’s adamant position that decisions to institute review on a patent cannot be appealed.
Ruschke shrugged off claims that the PTAB’s standard of delegating the same three-judge panel that hands down the institution decision –– which asks the board to determine whether there is a likelihood that the challenged patent claims are invalid –– and the final written decision creates a “bias” in favor of petitioners. Ruschke explained that the nature of the inter partes review system, where petitioners bring forward prior art that is first used as the grounds for institution and, ultimately, the final written decision on validity, lends itself to overlap between the two rulings.
“If there is overlap,” he said, “I don’t find that surprising.”
Judge Plager acknowledged that there is complete agreement that, under the America Invents Act, parties cannot appeal an institution decision “as a preliminary matter.”
Where there is less accord, according to Plager, is on the question of whether the Federal Circuit can examine jurisdictional questions following a final written decision. Plager suggested he takes the affirmative view, considering “you can’t have agencies exercising authority that Congress has not granted to them.”
Plager cited a Federal Circuit decision known as Versata, where it ruled on the types of patents that can be examined under a covered business method review. That case has been appealed to the Supreme Court, although the justices have yet to grant cert.
Cuozzo presents the question of the appealability of institution decisions, but Plager, again speculating on the case’s outcome, said he didn’t think the justices will reach that issue.
“My guess is they’re going to focus on the standard of review for construction, not on this issue, but, you never know,” he said.
--Editing by Jill Coffey.
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