On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed v.Lee, in part, to decide whether the PTAB should be applying the broadest reasonable interpretation when construing claims in AIA review proceedings rather than the claim construction applied in district court litigation.  One of the questions the Court will address is:  “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.”  In fact, the difference between the two constructions is a myth long perpetrated by the PTAB to avoid giving deference to how district courts have construed claims in companion cases.  See, e.g., SAP America, Inc. v. Versata Development Group, CBM2012-00001, Paper  70, at 7 (PTAB June 11, 2013).  Based on this myth, the PTAB has posited that it can reinterpret and strike down claims which have withstood challenge in federal court between the same two parties.  See, e.g., SAP America at 18 (declining to apply stare decisis based on district court construction).  Given that roughly 80% of AIA reviews are coupled to district court litigation, this myth has impacted a significant number of cases since the PTAB began instituting AIA reviews in the latter half of 2012.  And, of course, reexaminations have been impacted in similar fashion for many years, particularly inter partes reexaminations which also frequently were coupled with litigation.

A careful analysis of how the PTAB applies the broadest reasonable interpretation exposes the myth.  The PTAB does not merely interpret the claims in light of the specification.  Instead the PTAB considers the prosecution history and statements made against interest – at least those made by the patent owner.  How does that approach differ from what a district court does?  It does not, at least not as long as the PTAB applies the broadest reasonable interpretation in light of all relevant facts.

Some respond to the above proposition by saying that courts construe claims to maintain their validity.  In fact, they do not, except in “the limited circumstances … when two constructions are equally plausible, and a strong inference can be shown ‘that the PTO would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.’  This is a rare circumstance ….”  Peter S. Menell et al., Patent Claim Construction:  A Modern Synthesis and Structured Framework, at 51 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) (en banc).

On February 5, 2016 the Federal Circuit decided TriVascular, Inc. v. Shaun L.W. Samuels, No. 2015-1631, in which the Federal Circuit confirmed the above proposition by holding that the PTAB must give claims their “plain,” “ordinary,” and “customary” meaning, “unless such meaning is inconsistent with the specification and prosecution history.”  Id. at 6, 7.  In so doing, the Federal Circuit exposed the myth that there is any meaningful difference between the PTAB’s broadest reasonable interpretation and the district courts’ construction under Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc), cited in Trivascular, at 6.   Whether the Supreme Court will agree, only time will tell.