In our April newsletter we discussed In re: Cuozzo Speed Technologies.

There is a lot of uncertainty concerning the proper claim interpretation to use in post-grant trials. It is now up to the Supreme Court (“the Court”) to decide whether the PTAB is impermissibly invalidating claims by applying the broadest reasonable claim (“BRI”) interpretation (calling into question numerous IPR decisions.

Entering the equation on this topic is the fact that the PTAB, as evidenced by its recent decisions in five related IPR’s (including Aerospace v. MAG Aerospace Industries is) (“Aerospace”) is not waiting to render its decisions until the Court decides this important issue—or at least, the PTAB will not wait for the Court’s decision if this means extending the date of its final written beyond the one-year limit set by Congress in authorizing IPRs.

Congress gave The PTAB the option of delaying issuing a final written decision for 6 months past the one-year limit; but only if there is good cause. The patent owner in Aerospace requested a 6 month delay, which request was rejected by the PTAB.

Ironically, the PTAB did not consider waiting for the Supreme Court to decide whether the PTAB is using the correct claim interpretation to be a sufficient reason. According to various reporting on this case, the Aerospace PTAB panel was persuaded by the fact that no other panel had gone past the one-year limit.

Consequently, the PTAB seems to have considered the delay while waiting for the Supreme Court to be outweighed by its mandate to administer speedy and inexpensive justice.

If the Supreme Court determines that the PTAB has been applying the wrong standard there is the potential for significant problems in pending trials instituted under the BRI standard. Another question arises as to whether the Supreme Court’s decision will be applied prospectively, or from the inception of the creation of IPR’s under the AIA. Depending on how the Court rules, and how its decision is applied (prospectively or from the inception of IRS’s); both cases on appeal and petitions not yet decided could be at risk.

If the Supreme Court reverses the current prohibition on appealing a decision to institute, even in cases when the PTAB exceeds its authority, the impact on pending cases could be significant.

Remember that In Cuozzo the Court will decide both the proper standard for interpreting claims in an AIA trial and whether the PTAB’s decision to institute an IPR trial is insulated from judicial review, even if the decision exceeds the PTAB’s statutory authority.

The decision of the Court as to whether the PTAB’s decision to institute an IPR trial is insulated from judicial review, even if the decision exceeds the PTAB’s statutory authority, is an extremely important threshold issue. For example, if the Court rules that the PTAB’s decision to institute an IPR is not insulated from judicial review; this would open the doors to a barrage of challenges at the institution phase.

With all of the uncertainty on these issues until the Court renders its decision in Cuozzo it would be wise to be diligent in keeping the issues presented in Cuozzo alive in anticipation of a possible appeal, depending on the Court’s decision.